portant Publications
• /
Rs. A.
A. C. Dutt’s Indian Contract Act, 1936 ... ... 7 0
A. C. Dutt’s Commentaries on India Successful Act, 1933* . ... 10 0
A. C. Ganguli's Civil Court Practice & Procedure, 5th Ed. 1936 -5 0
A. Ghosh’s Provincial Insolvency (Amended)' Act, new 10th Ed. 1935 4 0
A. Ghosh’s Land Acquisition Acts, with L. A. (Mines) Acts &c. 3rd Ed. 1935 S 0
A. Ghosh’s Law of Endowments (Hindu fcJVlahomedan) 1932 ... 10 0
B. B. Mitra’s Criminal Procedure Code, 8th Ed. 1934 ... ... 10 0
B. B. Mitra’s Provincial Small Cause Courts Act, 7th Ed. 1935 ... 3 0
B. B. Mitra’s Transfer of Property Act, As Amended to 1934, 8th Ed. 1934 7 8
Bhashyam & Adiga’s Negotiable Instruments Act, 6th Ed. 1935 ... 12 0
B. K. Pal’s Civil Reference, 1836—1935 6th Ed. 1936 (In the Press) 8 0
B. K. Pal’s Up-to-date Criminal Reference, 1836—1933 4th Ed. 1933 ... 7 0
Major Cox’s Medico-Legal Court Companion, illustrated, 2nd Ed. 1928 7 8
De Souza’s Indian Conveyancing Forms & Precedents, 2nd Ed. 1436 2 8
D. C. Banerji’s Law of Arbitration & Award in B. I., 4th Ed. 1933 ... 10 0 ■
D. N. Guha’s Law of Defamation & Malicious Prosecution 1934 ... 2 0
Sir D. F. Mulla’s Civil Procedure (Amended) Code, 10th Ed. 1934 ... 22 0
Sir D. F. Mulla’s Indian Registration Act, 3rd Enlarged Ed. 1935 ... 10 0
Sir P. F. Mul ldBHhd u Law, 8th (Enlarged) Ed. 1936 ... 14 0
Sir D. F. Mull|^m|br of Property Act. 2nd (Enlarged) Ed. 1936 ... 18 0
Sir D. F. Mulls||fl^Hpedan Law, (0th Enlarged Ed. 1933 ... 5 8
Sir D. F. Mulla’sTawof Insolvency in India, T. L. L. 1 929—1934 8 0
Sir Mulla & Pratt’s Indian Stamp Acts, 3rd Enlarged Ed. 1935 ... 7 0
Sir Pollock & Mulla’s Indian Contract & Specific Relief Acts,
6th Ed. 1931 ... ... ... ... ... ... 16 0
Sir Pollock & Mulla’s Indian Sale of Goods Act, ( 933 ... 7 0
Sir Pollock & Mulla’s Indian Partnership Act, 19541 ... ... 7 0
E. C. Ormond’s Law of Patents in B. I. 1936 ... ... ..." 10 0
F. C. Brewester’s Fingerprints, fully illustrated 1936 (In the Press) ... 5 0
G. K. Roy’s Handbook of Police Acts, 1930 ... ... 3 0
G. K. Roy’s Indian Arms Act Manual 9th Ed. 1935 .... 6.10
H. C. Mitra’s Indian Limitation Act, 1 1tb Enlarged Ed. 1935 ... 7 8
H. C. Mitel’s Statute'Law of Divorce in B, I. 1936 ... 7 0
H. C. Mitels Statute Law of Marriage in India, 1936 ... 4 0
j. L. Kapur's Law of Adoption in India 1933 with Supplement upto 1935 ... 10 0
Jethabhai 100 year’s Indian Calendar, 1845-1944 ... ... 6 0
Jagat Narain’s Indian Election Petitions, 1920 33 (in 4 Vols.) ... 30 0
K. C. Chakrabarti's Indian Motor Vehicles Act, 1934 ... ... 3 0
K. C. Chakrabarti’s Criminal Pleadings Evidence & Practice In B. I.,
New 3rd Ed. 1936 ... ... ••• ... ,, i j 3 0.
K. J. Aiyar’s Manual of Law Terms & Phrases^ new 2nd Enlarged Ed.
1934 ... ... ... ... ii. ... 5 0
,K. M, Bhattachary’s Opium Act 2nd Ed. 1935 ... * ... 2 8
. EasiernV Important faMications
» Ifts. Ai*
K. M v Ghosh’s Indian Cduipanie*. Act, With Latest Rules, 2nd
Ed f , 1934 ... ••• - ••• ... 4 ' ... * 0
K. N. Bh&umik's Patni& Revenue Sate Lewf?1935 , ... . 5 0
K. N. Bhauntik s lftdian Limitation Act 193$, (In the Press) ... 5 Q
K. N. Bhaunjik’s Bengal A^^uUural^^to/siR^Iief Act ... 18
Dr. KrishnamackariAr's Succession Certificates and Curators 1934 ... ,3 '* 0
Do Law of Registration 4* British Indian 1935 '..* 7 0
Do Provincial Small CauseCourtSjl933 *... $ 0
M. N. Basu’s Court JFees & Suita Valuation Acts* 6th Ed 1935 ... 4 8
M. N. Basu’s Indian Stamp (Amended) Act, 4th Enlarged Ed. 1933 * .... 5 0
Sir M. N. Mukherji’s Trial by Jury, 1936 ... ...,/ 10 0
Sir Mi tr a & Sir Mukherjee’s Bengal Tenancy Act with Suplement
upto, 1934 ... ... ... ... ... 12 0
N. C. Mitra's Indian Divorce Act, 2nd Ed., 1931 ... 4 0
N. D. Basu’s Law of Injunctions in India, 1934 ... ... - ... ' 7 0
N.-D. Basu’s Law of Evidence in B. I., 2nd Ed., with Supplement to 1935 ... 12 0
N. D. Basu’s Annotated Indian Civil Court Hand-book 4th Ed., 1934 * 12 8
N. D. Basu’s Annotated Indian Criminal Court Handbook 4th Ed.,
1935 ... ... ... v.. ...... ... 10 0
N. N. Bose’s Criminal Lawyers' Companion 1931 ... ... 3 8
N. K. Bhattacharjee’s Cattle Trespass Act, 2nd (Enlarged) Ed 1932 . ... 1 8
P. C. Mogha’s Law of Pleading in B. 1., 5th Enlarged Ed. 1936 ’.i. 10 0
R. L. Anand's Law of Bails in Criminal Matters 1935 ... 5 0
Serajul Islam's Public Demands Recovery Acts in Bengal and Behar
1930 ... ’*■*. ••• ... ... ... ... f ;2 8
S. C. Chatterji’s Lhw pf ^Evidence in Criminal Cases, 2nd Enlarged Ed.
1934 v , ... ■' ... ... ... ... ... : 4 0
S. Mt Dasgupta's Indian Income Tax (Amend). Act, 2nd Enlarged
Ed. 1934 vyitk supplement to end. oi 1935 , • ... ... ... » &
S. M. Lahiri's Law Of Carriers & Railways in B. L, 2nd Enlarged
Ed. with supplement up*ta February 1935 ••• ... ... 8 0
S. M. Lahirfs Specific Relief (Amended) Act, 4th Enlarged Ed. 1936 ... 7 8
S. M. lahiri’s Transfer of Propertty <Amended) Act, 3rd- Ed.
*1934' *•' ■ . ... ■ ■ ‘ ... ... ^ * *<*■*.■*'■ .4 0
S. M. Lahiri’s Ihdidn Partnership Act, hew 2nd Ed. 1934 .... 4 0
S. N. Basil's Pleaders’ Survey Manual 1930 ... S 0
S. N. Basu's Local Investigation & Relaying 1936 ... ' A 8
S. Roy’s Law of Confessions in B. I., 6th Enlarged Ed. 1 929 '••• VI, ' O '. 0
S. Roy’s Law of Bad Livelihood & Cognate Offence., 4th Enlarged
Ed. 1930 * ... ’ ..... jrf’j'V.' S;\ « 0
S. Row’. India* Trust. Act, 2nd Ed. by P» R. Iyer 1932, : # ®
T. Outt’s LnjSr of Provident Funds in India. 1934 ••• ' 8
Tekchand*. Law of Legal Practitioner, in India 1935
ORDER THE PUBLISHERS^
EASTERN LAW HOUSE, is, ooufGE So. CALCUTTA.
THE A-4£~s~ '
LAW OF PATENTS*^'"
IN INDIA
IN RELATION TO INVENTIONS
WITH COMMENTARIES ON THE INDIAN PATENTS
AND DESIGNS ACT. 1911 (ACT 2 OF 1911) AND
ON THE INDIAN PATENTS AND DESIGNS
RULES, 1933 AND INDIAN SECRET
PATENT RULES ETC. ETC.
BY
E. CHARLES ORMOND,
of Q ray's Inn, Barrister -at- Lau) and an Advocate
of the Calcutta High Court
WITH A FOREWORD
BY
THE RIGHT HON’BLE LORD ATKIN,
of Hu Majesty’s Prloy Council and a Lord
CALCUTTA :
EASTERN LAW HOUSE,
LAW PUBLISHERS. 15. COLLEGE SQUARE.
1936
(AH right* including right of translation reserved.)
(Price Rs. 12/8 net.
Published by B. C. De
\ EASTERN LAW HOUSE
/5, College Square, Calcutta .
6 73 £
;ro3o
F rinted :
by Tridibesh Basu, B.A.. at the K. P.
Basu Printing Works, 11, Mohendra
Gossain Lane, Calcutta, aa to pages
1-928 and 1C49-1094 :
by W. E. Kilsby, at the Edinburgh
Press, 300, Bow Bazar Street, Calcutta,
as to pages 929-1048 and 1095-1 120 :
and by I. C. Ghosh, at the Eharati
Printing Works, 46/1, Manicktala Spur,
Calcutta, as to pages 1121-1162 and
pages i-xlvi.
FOREWORD
BY
THE RIGHT HONOURABLE LORD ATKIN.
of His Majesty's Pricy Council and a Lord of Appeal in Ordinary.
This book though primarily a law hook has not merely
a legal outlook. The author contemplating the spread of
education in the sciences and the industrial growth of India
envisages in the near future greater activity of inventors
and further and profitable use of inventions. He has
addressed himself to the needs of inventors and manu-
facturers alike and has pointed out the salient points in
Indian patent law in a practical form and intelligible
language. The book should prove invaluable to those
non-lawyers who are interested in patentable and patented
inventions.
But the author has spared no pains to make the book
a complete exposition of the law of patents in India. The
Indian statutes have followed closely but not slavishly the
coresponding English law and it is obviously impossible to
' expound the Indian law without a knowledge of the English
statutes and decisions. The writer appears to have
mastered the history and principles of the English law : and
his interpretation of the Indian law is fortified by full
"vguotations from English cases on corresponding problems,
and by pointed references to distinctions between the two
codes where they exist.
hr THE LAW OF PATENTS IN INDIA
This is obviously a book into which the author has
put unremitting labour and skill. It is likely to prove a
necessary part of the cquitment of persons in India interested
in patents, lawyers and non-lawyers alike, and I cordially
recommend it.
To my Father
whose life ended on the 1 8th December 1 930.
and
to my son
whose life began on the 21st December 1933,
this work is
dedicated
PREFACE.
The Patent Law of England has done much for the industrial
development of England: more than is commonly realised. It is
partly the belief that the Patent Law of India can be used to the great
benefit of Indian industries, that has impelled me to undertake this
present work. If by making better known the law and system of
Patents in India this book should to any extent help in thus adding
to the common wealth and to the common good of the industries of
India, besides affording, (as primarily intended, as a law book for
the legal community), a sufficiently comprehensive and lucid exposition
of the law of Patents for Inventions as it exists to-day in India, to
be of use to the profession, the labour involved will be doubly rewarded.
I desire here to record my obligation to the Right Iion’ble Lord
Atkin for his generosity, in spite of all the other insistent calls that
he has upon his time, in being good enough to read this book prior to
publication and to write for it a Foreword, thus conferring an honour,
which has been to me of the greatest encouragement.
To C. Stratton Cross, Esq., Chartered Patent Agent, of Calcutta,
and formerly of London, with whom I have had numerous discussions
on many points as they have arisen during the progress of the work, I
am, even more than to any one else, most greatly indebted. From start
to finish he has accorded to me his unstinted help; and while in no
respect responsible for the views expressed, he has afforded numerous
suggestions of the greatest possible practical value.
I have to thank my friend Sachindranath Roy Chowdhury, Esq.,
Barrister-at-Law of the Calcutta Bar, for his help in compiling the
Index; and certain other very good friends who have kindly completed
the tedious task of arranging in alphabetical order the table of cases.
I have gratefully to record my thanks to Mr. K. Rama Pai, M.A.,
the Controller of Patents for India, for his kindly and generous
assistance in several instances ; and for graciously affording me the use
of various publications.
9
X
THE LAW OF PATENTS IN INDIA
I have to thank my friend Mr. A. L. Collet, Registrar of the
Original Side, of the Calcutta High Court for having ungrudgingly
given me the full benefit of his experience and knowledge on several
points regarding the practice of this Court ; and the Registrar on the
Appellate Side, also, of the Calcutta High Court, for generous assis-
tance on certain points. I wish also to thank the Registrars and Officers
of various District Courts throughout British India for affording me
certain accurate information on certain points relating to certain
matters (contained in Chapter XVII) which might have been otherwise
not easy to obtain.
I have to thank my friend W. W. K. Page, Esq., Barrister-at-Law,
of Calcutta, for kindly having given me during the time I have been at
work on this book, as he has done at all times for many years, the
full use of his excellent library.
I have to acknowledge the facilities afforded to me by the Board
of Trade, in London, and the Controller, His Majesty's Stationery
Office, London, for permission to reproduce the terms of the
International Convention for Protection of Industrial Property. I
also have to make the usual acknowledgments to the authors
and publishers of the previous works on Patents to which I have
referred in the text; and in particular to Messrs Sweet & Maxwell of
Chancery Lane, London. And I have to thank my clerk Babu Sudhir
Kumar Lahiri, who has himself typed out from my manuscript almost
the whole of the book.
These acknowledgments would still be incomplete were I to
omit to mention the name of my friend N. F. Harwell, Esq., Barrister-
at-Law, of Calcutta; since it was the association with him many
years ago in a Patent matter that constituted a first introduction to
Patents in India which resulted in an early zest for this branch of
the law.
I have finally to record here my sorrowful tribute to the memory
of the late Mr. Tndra Narain Dey who was to have published this
book; whose sad and sudden death occurred last year before its
completion. I would like to record that a relationship which originated
through a chance business connection as author and publisher had
developed into a real friendship, which on account of his integrity,
efficiency, extreme energy and capacity for work, and enthusiasm for
life, as well as his mental power, his charming and very engaging
PREFACE
xi
personality, and, not least among his other qualities, his whimsical
good humour and wit, the author will always remain very proud to
have owned.
The scheme of arrangement of the present work will, it is hoped,
he readily appreciated on a perusal of the table of contents.
E. C. ORMOND.
10, Old Post Office Stkfft,
Calcutta.
November, 1936 .
TABLE OF CONTENTS
Page.
Foreword iii
Preface ix
Index of Cases xvii
Comparative Table xxxvii
Introduction xxxix
CHAPTER I.
History and Nature of Patent Rights obtainable in British India . 1
CHAPTER II.
Exient of Patent Rights now obtainable in British India 23
CHAPTER III.
Conditions imposed on the Patentee 38
CHAPTER IV.
Commercial factors arising when deciding whether to apply for a
Patent — Risk of relying on mere secrecy of the invention
Valuation of a Patent -Actual Values of patented inventions 48
CHAPTER V.
The System of Administration of the Patent Law in India - The
Patent Office- The Functions in the system of the Controller
and of H. E. the Governor General, and of the Courts Patent
Agents The Cost of obtaining a Patent 64
CHAPTER VI.
What things may be Patented —Certain requisites of a valid Patent
— Attributes necessary in regard to the invention Preliminary
considerations— Subject matter— Legality of purpose— Morality
—Fitness for Exercise of the Crown's prerogative— The terms
“Invention" and “Manner of Manufacture" -Novelty: and
Freedom from any prior grant -Utility 109
CHAPTER VII.
Further requisites of a valid Patent in regard to the Application
and Specification— Sufficiency in the Specification— Patentee
must be the true and first Inventor - Absence of Fraud . 226
CHAPTER VIII.
Further requisites of a valid and effective Patent in regard to the
management of the Patent after grant— Obligations not to
ABUSE THE MONOPOLY— OBLIGATIONS FOR ADEQUATE WORKING AND
supply— Obligations as to manufacture in British India . 268
XIV
THE LAW OF PATENTS IN INDIA
CHAPTER IX.
Page.
Procedure relating to Applicatins for Patent in British India— To
WHOM A PATENT MAY BE GRANTED — APPLICATIONS BY THE TRUE AND
first Inventor: Ordinarily or as communicatee from abroad —
By his Legal Representative— By his “Assign” Reciprocity
Applications-Qualification of the Applicant The stages of
PROCEDURE BETWEEN APPLICATION AND GRANT OF THE PATENT
(when unopposed)— Objections from the Patent Office prior
to Acceptance of the Application 334
CHAPTER X.
Stages of procedure between Application and Grant when opposed-
objections after acceptance of the application but prior to the
grant— Opposition Proceedings before the Controller 399
CHAPTER XI.
Procedure regarding objections after grant of the Patent- Revoca-
tion— Compulsory Licences— No belated oppositions before the
Controller— Applications for revocation before the Court-
Applications for revocation or compulsory licenses before H. E.
the Governor-General in Council for abuse of monopoly . . 435
CHAPTER XII.
Procedure relating to amendment of a Specification— I. Develop-
ment of the right to amend- II. Amendment by the Controller
III. Amendment by the Court - Procedure relating to recti-
fication of the Register of Patents 474
CHAPTER XIII.
Procedure relating to restoration of a lapsed patent .497
CHAPTER XIV.
Infringement What constitutes infringement— Defences in rela-
tion to the grant— Defences of denial of the Act alleged-
defences in relation to the Specification - Lord Moulton's
defence 535
CHAPTER XV.
Infringement continued— Defences in relation to the grant-
defence of denial that the act complained of as being an
INFRINGEMENT WAS DONE 547
CHAPTER XVI.
Infringement continued— Defences in relation to the Specification
— Defences of invalidity: Defence that Defendant's article
OR PROCESS IS OUTSIDE THE MONOPOLY DELIMITED IN PLAINTIFF'S
specification: Lord Moulton's defence ..... 594
TABLE OF CONTENTS
xv
CHAPTER XVII.
Pace.
Enforcement of monopoly rights by Patentee — Letters of demand- -
Suits— Practice and Procedure in suit for infringement— Who
can sue— Who can be sued— Jurisdiction— Interlocutory matters
—Ex PARTE INTERIM INJUNCTION— INTERIM INJUNCTION ON NOTICE
—Reliefs obtainarle in suit— Pleadings-- Onus— Experts—
Assessors - Form of orders— Costs— Appeals .... 632
CHAPTER XVIII.
Other Remedies— The Power of a High Court in respect of the
Controller of Patents— Writ of prohibition— Writ of certiorari
Writ of mandamus or Mandatory injunction Specific Relief
Act— Injunction— Costs .790
CHAPTER XIX.
Enforcement by others of rights against the Patentee and against
a person claiming to have an interest in a Patent Suit for
Threats 805
CHAPTER XX.
Precedure as to proceedings before His Excellency the Governor-
General in Council— Petitions in jurisdiction of first instance
Appeals from decisions of the Controller .... 829
APPENDICES
Appendix No. 1- -The Statute of Monopolies 841
Appendix No. 2.— Concerning Repealed English Statutes 848
Appendix No. 3— Current English Statutes and Rules- ... 851
1. The English Patents and Designs Acts, 1907-1932 . 853
2. The English Register of Patents Agents Rules, 1932 929
3. The English Patent Rules, 1932 934
4. The English Patents Appeal Tribunal Fees Order, And, The
English Patents Appeal Tribunal Rules, 1932 . 964
5. Certain English Rules of the Supreme Court relating to Patents
(Order 53A) .967
Appendix No. 4.— Repealed Indian Acts and Rules ... 975
Appendix No. 5, Current Indian Acts and Rules .... 1017
1. Objects and Reasons of the Bill which culminated in Act II of
1911 1019
2. Concerning Act II of 1911 as originally passed 1021
3. Objects and Reasons of the Bill which culminated in Act
XXIX of 1920 . 1022
4. Act XXIX of 1920 1023
5. Objects and Reasons of the Bill which culminated in Act
VII of 1930 1024
• xvi THE LAW OF PATENTS IN INDIA
Page.
6. Report of the Select Committee on the Bill which culminated
in Act VII of 1930 1028
7. Act VII of 1930 1030
8. Extracts from the Indian and Bengal Stamp Acts . 1039
9. Calcutta High Court (Jurisdiction Limits) Act (Indian Act
XV of 1919) 1044
10. Madras High Court (Jurisdictional Limits) Act (Madras Act
IV of 1927) . 1048
11. Text of the current Indian Patents and Designs Act (Act II of
1911) embodying the amendments and provisions made up
to date (as up to 31st October 1936) .... 1049
12. Indian Patents and Designs Rules, 1933. Also the Indian
Secret Patent Rules, 1933 1097
Appendix No. 6.- The International Convention for the Protection
of Industrial Property 1121
Index 1133
INDEX OF CASES.
Page.
A. & H/s application (1927), 44 R.P.C. 298 162
A. E. W/s application (1924), 41 R.P.C. 529 123, 128
A. F.’s application (1913), 31 R.P.C. 58 136, 137
A. L.'s application (1924), 41 R.P.C. 615 133
A. W. Loths application (1924), 41 R.P.C. 273 128
Acetylene Illuminating Co. Ltd. v. United Alkali Co. Ltd. (1902), 19
R.P.C. 213 783
Ackroyd v. Strange (1933), 50 R.P.C. 23 149
Actiengeselleschaft fur Anilin Fabrikation in Berlin v. Levinstein Ltd.
(1915), 32 R.P.C. 140 (C.A.) 652
Actiengessellschaft fur Anilin Fabrikation in Berlin and Anr. v. Levinstein
Ltd. (1913), 30 R.P.C. 401 (C.A.); 30 R.P.C. 673 ... 755
Adair’s Patent, In re (1881), App. Cas. 176 514
Adair & Young, L.R. 12 Ch.D. 13 557
Adamson v. Kenworthy (1932), 49 R.P.C. 57 .... 256
Adhesive Dry Mounting Co. v. Trapp & Co. (1910), 27 R.P.C. 341 559
Adie v. Clark, 3 Ch.D. 134 ......... 602
Adijai Coal Co. v. Panna Lai (1930), 57 Cal. 1341 (P.C.) ... 665
Adolf Speil’s Patent (1888), 5 R.P.C. 281 410
A. G. v. Vernon Brown & Boheme (1685), 1 Vern. 277 and 370 437
Aktiengesellschaft for Autogene Aluminium Schweissung v. London
Aluminium Co. (1919), 36 R.P.C. 199 743
Aktiengesellschaft fur Cartonnagen Industrie v. Temler (1899), 16 R.P.C.
447 723
Alfred Dunhill Ltd. v. Griffith Bros. (1934), 51 R.P.C. 93 . 577
Allen v . Rawson , 1 C.B. 551 253
Alliance Pure White Lead Syndicate Ltd. v. Mclvor's Patents Ltd.
(1891), 8 R.P.C. 321 755
Alsops Patent (1907), 24 R.P.C. 733 221
Anderson v. Patent Oxonite Co., 3 R.P.C. 279 581
Appledore Commutation, In re, 8 Q.B. 139 799
Arnold v. Bradbury, L.R. 6 Ch. App. 706 620, 621
Ashton and Knowles application (1910), 27 R.P.C. 181 . 265
Ashworth v. Roberts (1890), 7 R.P.C. 451 754
Attorney General v. Simpson (1901) , 2 Ch. 675 269
Auster Ltd. v. Perfecta Motor Equipments Ltd. (1924), 41 R.P.C. 482 . 785
Automatic Weighing Machine Co. v. The Combined Weighing Machine
Co., 6 R.P.C. 367 (C.A.) .
Aveling v.-Knipe (1815), 19 Ves. 441 .
704
657
THE LAW OF PATENTS IN INDIA
xviii
I’Af B.
Avery’s Patent (1887), 4 P.O.R. 165; (1887), 4 R.P.C. 152 (C.A.);
(1887), 36 Ch.D. 307 261, 262, 263, 336
Avery Ltd. v. Ashworth Son & Co., Ltd. (1915), 32 R.P.C. 463; 33 R.P.C.
235 (C.A.) 743
Axman v. Lund (1874), L.R. 18 Eq. 330 806, 808
B. A.’s application, (1915), 32 R.P.C. 345 135, 137, 138
Bachoo v. Nagindas (1914), 16 Bom.L.R. 263; 40 Bom. 270 . 670
Badische Anilin und Soda Fabrick v. Hickson (1906), 23 R.P.C. 433 . 570
Badische Anilin und Soda Fabrick v. La Societe Chlmiques des Usines
du Rhone and Anr. (1897), 14 R.P.C. 875 782
Badische Anilin und Soda Fabrick v. Levinstein (1887), 12 A.C. 710;
(1887), 4 R.P.C. 437 (C.A.); (1885), 2 R.P.C. 73; 4 R.P.C. 499
(H.L.) 160, 221, 750, 760, 768
Badische Anilin und Soda Fabrick v. W. G. Thompson Ltd. etc. (1904),
21 R.P.C. 473 270, 333
Bairstow’s Patent (1888), 5 R.P.C. 286 410
Balaram Bhaskarji and Anr. v. Ramchandra Bhaskarji & Ors. (1898),
22 Bom. 922 670
Baluram Ramkissen & Ors. v. Bai Pannabai & Anr. (1911), 35 Bom. 213 706
Baristow's Patent (1888), 5 R.P.C. 286 401
Basset Expaite (1884), 6 Q.B. 481 790
Basset v. Graydon (1897), 14 R.P.C. 701 (H.L.) 577
Bartlett’s Patent (see the Gormulley & Jeffrey Manufacturing Co.’s Peti-
tion) (1899), 16 R.P.C. 641 317, 468
Bates Valve Bag Co. v. B. Kershaw Co. (1920), Ltd., 50 R.P.C. 43 651
Batey & Sons v. Dalton (1887), 35 Ch.D. 700 ..... 653
Battey v. Kynock (1874), L.R. 18 Eq. 90 748
Benno Jaffe und Darmstaedten Lanolin Fabrik v. Richardson & Co.
(1894), 11 R.P.C. 271; (1893), 10 R.P.C. 136; (1894), 11 R.P.C.
93 (C.A.) . . \ 616, 755, 770
Berliner v. Edison Bell Phonograph Co. Ltd., 16 R.P.C. 336 . 823
Betts v. De Vitrie (1864), 3 Ch. App. 441 581
Betts v. Menzies (1857), 8 E. & B. 937 ; 28.L.J.N.S. (Q.B.) 361 . . 184, 191
Betts v. Neilson (1868), 3 Ch. 431; (1871), L.R. 5 H.L. 1; L.R. 3 Ch.
App. 429; (1866), L.R. 5 H.L. 1 184, 567, 568, 776
Betts v. Wilmot (1871), 6 Ch. App. 239 575
Bevan v. Welsback Incandescent Gas Light Co., 20 R.P.C. 73 816
Birch v. Mather (1883), 22 Ch.D. 629 755
Bischof’s Patent (1884), 1 R.P.C. 162 512
Blakey & Co. t>. Latham & Co. (1889), 6 R.P.C. 29 ... 770
Bloxan v. Elsee, 1 Car. & P. 558 348
Board of Education v. Rice (1911), A.C. 179 800
Bonnam v. Imperial Tobacco Co. Ltd. (1923), 50 Cal. 762; (1924), 51
Cal. 892 (P.C.) 575
Bonnard v. London General Omnibus Co. Ltd. (1921), 38 R.P.C 1;
(1919), 36 R.P.C. 307 150, 167, 775
Boulton V. Bull (1795), 2 Hy. Bl. 463 , 14
index of cases
XIX
Page.
Boulton and Watt v. Bull (1795), 2 Hy. Bl. or 126 E.R. 651 113
Boults Patent (1909), 26 R.P.C. 383 . 328, 329
Bovill v . Crate (1865), L.R. 1 Eq. 383 723
Bower Barf! Patent, In Re (1895), A.C. 675 514
Boyce v. Morris Motors Ltd. (1919), 36 R.P.C. 211 . 185
Boyd v . Horrocks (1888), 5 R.P.C. 557 770
B. R/s application (1923), 40 R.P.C. 469 135
Bracher v. Bracher Dean & Co. (1890),, 7 R.P.C. 420 . 724
Brauer v. Sharpe, 3 R.P.C. 193 816
Bremer's and Hogner’s Patent (1909), 26 R.P.C. 449 .... 331
Briggs & Co. v . Lardeur (1884), 1 R.P.C. 192 .... . 726
British Celanese etc. application (1932), 49 R.P.C. 253; (1933) 50 R.P.C.
247 383, 385
British Celanese v. Courthaulds Ltd. (1933), 50 R.P.C. 63 . . 748, 749
British Dynamite Co. v . Krebs (1896), 13 R.P.C. 190 (H.L.) . 245, 619
British Motor Syndicate v. Andrews & Co. Ltd. (1899), 16 R.P.C. 577 . 750
British Motor Syndicate v. J. Taylor & Sons Ltd. (1890), 7 R.P.C. 723;
(1900), 17 R.P.C. 723 (C.A.) ..... 556, 557, 562, 569
British Ore Concentration Syndicate Ltd. v. Minerals Separation Ltd.
(1910), 27 R.P.C. 33 (H.L.) 235
British Reinforced Concrete Engineering Co. Ltd. v. Lind (1917), 34
R.P.C. 101 256
British Thomson Houston (1929), 46 R.P.C. 367 .... 519, 526
British Thomson Houston Co. Ltd. v . British Insulated & Helsby Cables
Ltd. (1924), 41 R.P.C. 345 446, 447, 448, 453, 454, 734, 775
British Thomson Houston Co. Ltd. v. Charlesworth Peebles & Co.
(1923), 40 R.P.C. 426 769
British Thomson Houston Co. Ltd. v. Corona Lamp Works Ltd. (1922),
39 R.P.C. 49 (H.L.) 241, 616, 784, 785
British Thomson Houston Co. Ltd. v. Duram Ltd. (No. 2) (1920), 37
R.P.C. 121 748
British Thomson Houston Co. Ltd. v. Irradiant Lamp Works Ltd. (1923),
40 R.P.C. 243 781
British Thomson Houston Co. Ltd. v. Philip Henry & Co. Ltd., (1928),
45 R.P.C. 218 (C.A.) 716
British United Shoe Machinery v . Fussel, 25 R.P.C. 631 (C.A.) . 235
British United Shoe Machinery v. Simon Collier Ltd. (1910), 27 R.P.C.
567 (H.L.) 561, 562, 563
British United Shoe Machinery v. Thompson, 22 R.P.C. 177 235
British Vacuum Cleaner Co. Ltd. v. L. S. W. R. & Co. (1912), 29 R.P.C.
309; (1910), 27 R.P.C. 649 235, 784
British Vacuum Cleaner Co. Ltd. v. Suction Cleaners Ltd. (1904), 21
R.P.C. 203 158
British Westinghouse Manufacturing Co. Ltd. v. Electrical Co. (1911),
28 R.P.C. 517 781
Brojo Nath v . Maheshwar (1918), 29 CaLL.J. 20 588
Brown v. Hastie & Co. Ltd. (1906), 23 R.P.C. 361 (H.L.) ... 704
Brownhill's Patent (1889), 6 P.O.R. 136 401
THE LAW OF PATENTS IN INDIA
Xk
Page
Brunton v. Tawker (1821), 4 B. & All. 541 171
Budgen v. Thomson, L.R. 3 App. Cas. 34 608
Burt v. Morgan, 4 R.P.C. 278 815
C/s application (1920), 37 R.P.C. 247 126, 163
Calcroft v. West (1845), 2 Jones & Let. 128 636
Caldwell v. Van Vlissingen (1852), 21 LJ. Ch. 97 (C.A.) ... 553
Calico Printers v . D. N. Mukherjee (1936), 40 C.W.N. 938 786
C. & W.’s application (1914), 31 R.P.C. 235 139,
Cannington v . Nuttall (1871), 5 H.L. 205 159
Carey's application (1889), 6 R.P.C. 552 348
Carpenter v. Smith (1842), 9 M. & W. 300 183, 187
C^rs v . Bland Light Syndicate Ltd., 28 R.P.C. 33 .... 816, 827
Casey's Patent in re Steward v. Casey (1892), 1 Ch. 104 (C.A.); 9
R.P.C. 9 589
C. C. Wakefield & Co. Ltd. v. Purser (1934), 51 R.P.C. 167 . 577
C. Govindarajulu Naidu v. Secretary of State for India in Council (1927),
50 Mad. 449 701
C. G. R.'s application, 42 R.P.C. 320 137
Chabot v. I^>rd Morpeth, 15 Q.B. 446 799
Challender v. Royle, 4 R.P.C. 363 (C.A.) 822, 824, 826
Chamber's application for a Patent, (1915), 32 R.P.C. 416 . 835
Chartered Institute of Patent Agents v. Lockwood, 11 R.P.C. 374 . 459
Cheaven v. Walker (1876), 5 Ch.D. 858 347
Cheetham v. Oldham & Fogg (1881), 5 R.P.C. 617 ... 748
Cincinnati Grinders v. B. S. A. Tools Ltd. (1931), 48 R.P.C. 33 448,453,545,559
Claridges Patent (1851) 515
Clark v. Adie, 3 Ch.D. 134; (1877), 2 A.C. 315 . . 602, 609, 616
Clifford v. O’Sullivan In re (1921), 2 A.C. 570 798, 799
Cloth Workers of Ipswich (1615), 1 Rol. R.H 169
Colley v. Hart, 7 R.P.C. 101; 6 R.P.C. 21 822, 826
Colman v. Cook & Co. (1912), & R.P.C. 175 333
Colonial Bank v. Whinney (1885), 30 Ch.D. 261 587, 588
Coloured Asphalt Co. Ltd. v . British Asphalt Bitumen (1936), 53 R.P.C.
89 747
Combined Weighing Machine Co. v. Automatic Weighing Machine Co.,
6 R.P.C. 502 815, 824
Commercial Solvents Corporation v. Synthetic Products Co. Ltd. (1926),
43 R.P.C. 502 141
Companies Reunie des Glaces et Verres Speciaux du Nord de la France
application (1931), 48 R.P.C. 185 128
Comptroller General, Ruling of 1911(B), 28 R.P.C. Appendix 1 404
Comptroller General’s Ruling 1912(B) (1912), 29 R.P.C. Appendix V . 408
Comptroller General’s Ruling (1912(C) (1912), 29 R.P.C. Appendix VII . 409
Comptroller’s Ruling (B), 28 R.P.C. Appendix III ... 409
Comptroller's Ruling in Counter & Ball Games application, 1926, 42
R.P.C. Appendix A 131
Comptroller’s Rulings, 31 R.P.C. (A.); 30 R.P.C. (B) . 408
index of cases
XXI
Page.
Consolidated Car Heating Co. v. Came (1903), 20 R.P.C. 745 (P.C.) . 627
Copper's application (1901), 19 R.P.C. 53 129
Cornish v. Keen (1836), W.P.C. 501 167, 222
Craig v. Dowding, 25 R.P.C. 1; 25 R.P.C. 259 (C.A.) . 780, 813, 815, 816, 827
Crampton v . Patents Investments Co., 5 R.P.C. 393 . . 815, 828
Crane v. Price (1842), W.P.C. 412 218
Croysdale v. Fisher ,1884), 1 P.O.R. 21 184
Cropper v . Smith (1884), 28 Ch.D. 148; (1884), 1 R.C. 89 . . 491, 616
Crossby v. Beverley, 1 W.P.C. 119 780
Crossby v. Derby Gas Light Co. (1839), W.P.C. 119 . 777
Crossby v. Tomey (1876), 2 Ch.D. 533 755
Crouther v. United Flexible Metalic Tube Co., 22 R.P.C. 549 816
Currie & Timmis Patent (1898), 15 R.P.C. 63 (P.C.) .... 512
Curtis v . Platt, 3 Ch.D. 136 610, 613
Curwens application (1913), 30 R.P.C. 128; 29 R.P.C. Appendix A 263
D's application, 43 R.P.C. 397 137
D. A.'s & K.'s application (1926), 43 R.P.C. 154 137, 163
Daniel Adamson & Co. Ltd. (1933), 50 R.P.C. 171 ... 387
Darcy v. Ailein. Trin 44 Eliz 77 E.R. 1260; 11 Co. Ref. 25; (1692),
1 Web. P.C. 6 8, 12, 169
Daulatram Rawatmull v. Maharajlal & Ors. (1936), 40 C.W.N. 164 677
Davenport v. Jepson (1862), De.G.J.F. 440 723
Davenport v. Rylands (1865), L.R. 1 Eq. 320 776, 777
Davies & Davies Patent, 28 R.P.C. 50 823
Daw v. Eley (1865), 2 H. & M. 925 755
Day v. Davies, 22 R.P.C. 42 581
Day v. Forster, 7 R.P.C. 54 815
Deeley's Patent (1895), 12 R.P.C. 192 443, 606
Dege's Patent (1895), 12 R.P.C. 448 446, 448
Dent t/. Turpin, 2 J. and H. 139; 30 L.J. Ch. 495 655, 656
Descombes and Arondel v. Lestor and Parton (1931), 48 R.P.C. 473 784
DeSouza and Anr. v. Coles (1867), 3 M.H.C. 384 682
Deutsche Gasgluhlicht Aktiengesellschaft application, 26 R.P.C. 101 133
Deutsche Nahmaschinen Fabrik etc. v. Pfatt (1890), 7 R.P.C. 16 . 185
Diamond Coal Cutting v. Mining Appliances Co. (1915), 32 R.P.C. 569 . 824
Dick v . Haslam, 8 R.P.C. 196 816
Dick v. Tulles (1896), 13 R.P.C. 149 770
Dollond's Case (1776), 1 W.P.C. 43 251
Dorman Long & Co. v. J. C. Mahindra & Anr. (1935), 39 C.W.N. 573
(C.A.) 80, 81, 88, 431, 802, 804
Douglas v . Pintsch’s Patent Lighting Co., 13 R.P.C. 673 816
Dowling Billington (1898), 7 R.P.C. 191 549
Dowson Taylor & Co. v. Drosophone Co. Ltd., 11 R.P.C. 656 . 825, 826
Doya Narain Tewary v. Secretary of State for India in Council (1887),
14 Cal. 256 701
Dressler's Patent (1929), 46 R.P.C. 165 525
Driffield Co. v. Waterloo Co., 3 R.P.C. 46 815, 827
THE LAW OP PATENTS IN INDIA
XXli
Page.
Dudgeon v. Thomson (1877), 3 A.C. 34 772, 788, 789
Dunlop Pneumatic Tyre Co. Ltd. v. David Moselay & Sons Ltd. (1904),
21 R.P.C. 274 (C.A.) 554, 559
Dunlop Pneumatic Tyre Co. Ltd. v. Holborn Tyre Co. Ltd. (1901),
18 R.P.C. 222 554
Dunlop Pneumatic Tyre Co. Ltd. v. Neal (1899), 16 R.P.C. 247 . 577
Dunlop Pneumatic Tyre Co. Ltd. v. New Seddon Co Ltd., 14 R.P.C. 332
(C.A.) 823
Dunlop Pneumatic Tyre Co. Ltd. v. Remington Bros. Co. Ltd. (1900),
17 R.P.C. 665 (C.A.) 761
Dunlop Pneumatic Tyre Co. Ltd. v. Stone (1897), 14 R.P.C. 263 . 722
Duvergier v. Fellows (1828), 5 Bing. 248; 133 Eng. Rep. 1056; (1820),-
10 B. & Co. 826; 109 E.R. 655 (in error); 1 Cl. and F. 39; 6 E.R.
831 (H.L.) 584
Easterbrook v. G. W. R. Co. (1885), 2 R.P.C. 201 .... 770
Eastern Archipelago Co. v. R. (1853), 2 E. & B. 856 .... 437
Edgeberry v. Stevens (1691), 1 Web. P.C. 35 172
Edison and Swan v. Holland (1899), 6 R.P.C. 243 (C.A.); (1897), 6
R.P.C. 243 (C.A.); (1888), 5 R.P.C. 213 . . 221, 244, 704, 743
Edison and Swan United Electric Co. v. Woodhouse & Rawson, 4 R.P.C.
107 622
Edison Bell Phonograph Corporation Ltd. v. Hough (1844), 11 R.P.C.
594 726
Edison Bell Phonograph Corporation Ltd. v. Smith and Young (1894),
11 R.P.C. 389 618, 620
Edlsonia Ltd. v. Forse (1908), 25 R.P.C. 546 256
Edler v. Victoria Press Manufacturing Co. (1910), 27 R.P.C. 114 . . 705, 757
Edmunds application (1886), Griff. 281 265
Ehrlich v. Thlee (1888), 5 R.P.C. 437 221
E. I. du Pont de Nemours and Co. application (1933), 50 R.P.C. 115 . 391
Electric Construction Co. Ltd. v. Imperial Tramways Co. Ltd. (1900),
17 R.P.C. 537 195
Electric Lamp Manufacturing Co. Ltd. v. Osram Lamp Works Ltd.,
28 R.P.C. 480 824
Elias v. Gravesend Tinplate Co. (1898), 7 R.P.C. 455 .... 220
Elias Mayer v. Manoranjan (1918), 22 C.W.N. 441 .... 588
Ellam v. Mertyn, 16 R.P.C. 28 826
Ellis and Sons Ltd. v. Pogson (1923), 40 R.P.C. 62 815
E. M. Bowden’s Patent Syndicate Ltd. v. Herbert Smith (1904), 21
R.P.C. 438 .653
Emma Silver Mining Co. v. Giant, 11 Ch.D. 918 767
Engels t>. Hubert, 19 R.P.C. 201 815
Farr v. Weatherhead and Harding, 49 R.P.C. 262 815
Fawcett v. Homan (1896), 13 R.P.C. 398 (C.A.) .... 221
Fell’s Patent (1910), 27 R.P.C. 25 331
Flower v. Lloyd (1876), 45 L.T. Ch. 746 755
Forsyth v. Riviere (1819), 1 Webb P.C. 97 252
INDEX OF CASES
xxiii
Page.
Four Oxidising Co. r. Carr (1908), 25 R.P.C. 428 ... 177
Foxwell v . Bostock, 4 De.G.J. and S. 13 234
Franc Strohmenger and Cowan Inc. v. Peter Robinson (1930), 47 R.P.C.
493 245, 246
Frearson v. Loe (1878), 9 Ch.D. 48 554, 556, 726
Fuel Economy Co. Ltd. v. Murray (1930), 2 Ch. 93 (C.A.) . . 577, 602
Fullwood v . Fullwood (1878), 9 Ch.D. 176 725
Fusee Vesta Co. v. Brayant and May, 4 R.P.C. 191 823
G. & J. Weir’s application (1925), 43 R.P.C. 39 (1876), 3 Ch.D.
531 195, 199, 200, 205
General Electric Co. (1920) Ltd. v. Safety Lift & Elevator Co. (1904),
21 R.P.C. 109 755
George Baker’s application (1934), 51 R.P.C. 144 .... 384
George Hattersby & Sons Ltd. v. George Hodgson Ltd. (1906), 23 R.P.C.
192 (H.L.) 239
Germ Milling Co. Ltd. v. Robinson (1884), 1 R.P.C. 217 . 748
Ghanshayam Das Jagnani v. Ramnarayan Ganeshnarayan, Unreported case
being Title No. 1 of 1931 in the High Court of Patna; on appeal to
P. C. in (1936), 53 R.P.C. 160 . 671
Gibson v . Brand (1842), 4 M. & G. 179; (1842), 1 Web P.C. 640 . . 171, 235
Gillette Safety Razor Co. v. Anglo-American Trading Co. Ltd., 36 R.P.C.
465; (1913), 30 R.P.C. 465 (H.L.) 148, 545, 629
Gillette Safety Razor Co. Ltd. v. A. W. Gomage Ltd. (1908), 25 R.P.C.
492 575
Glossop, In re (1884), Griffin P.C. 285 401
Glover Co. v. American Steel and Wire Co. (1902), 19 R.P.C. 109 235
Gocool Chunder Gossamee v. Administrator General (1880), 5 Cal. 726 . 766
Gormully and Jeffery Manufacturing Co.’s Petition see Bartlett (1899),
16 R.P.C. 641 317, 468
Goucher v. Clayton (1865), 34 L.T. Ch. 239 . 601
Govindaswami Pillai v. Ramalingaswami Pillai (1931), 62 M.L.J. 644 797
Govindlal Bansilal v . Bansilal Motilal and Others (1922), 46 Bom. 249 . 670
Gramophone Co. Ltd. v. Ruhl (1910), 27 R.P.C. 629 .... 190
Greer v. Bristol Tanning Co. (1885), 2 R.P.C. 268 ... 716
Griffin’s application (1889), 6 R.P.C. 298; 27 R.P.C. App. (1) 264
Grosvenor Hotel Co., In Re (1897), 76 L.T. 337 800
Hadjee Ismail Hadjee v. Hadjee Mohomed Hadjee Joosub (1874), 13
Beng.L.R. 91 683
Haggenmacker’s Patent (1890), 15 R.P.C. 437 190
Haggenmackers v. Watson (1897), 14 R.P.C. 631 (C.A.) ... 190
Half Watt Case 244
Hall, In re (1888), 21 Q.B.D. 137 800
Hall if. Stepney Spare Motor Wheel Ltd., 27 R.P.C. 233 ... 823
Halsey’s Application (1914), 31 R.P.C. 101 263
Halsey v. Brotherhood (1880), 15 Ch.D. 514; (1881), 19 Ch.D. 386 . 806, 808
Haltersly & Sons Ltd. v. Hodgson Ltd. (1905), 22 R.P.C. 229 . . 759, 788
xxiv
THE LAW OF PATENTS IN INDIA
Page.
H. A. Metz Laboratories Inc. Application (1933), 50 R.P.C. 355 . . 398, 428
Hamilton Adams Application (1918), 35 R.P.C. 90 ... 132
Hancock v. Somervell (1851), 39 New. Lon. Jur. 158 .... 188
Hamathrai Binjraj v. Churamoni Shah & Ors. (1933), 37 C.W.N.
1139 673, 675, 680
Hamathrai Binjraj v. Sew Prosad Singh & Ors. (1936), 40 C.W.N. 165 . 678, 681
Harris v. Rothwell (1887), 35 Ch.D. 416 (No. 1); 3 R.P.C. 243 (No. 2);
3 R.P.C. 383; (1887), 4 R.P.C. 225 (C.A.) . . 195, 196, 199, 202
Harris v. Anderston Foundry Co. (1876), L.R. 1 A.C. 574: (1876), 1 A.C.
574 233, 616, 622
Harwood v. Great Northern Railway, 29 L.J. Q.B. 193; 35 L.J. Q.B. 27
(H.L.) 190
Haskell Golf Ball Co. v. Hutchinson, 21 R.P.C. 497 .... 823
Haslam v. Hall (1888), 5 R.P.C. 1 783, 785
Hasting's Patent (1551), 1 Web. P.C. 6 169
Hatcheks Patents (1909), 26 R.P.C. 1; 1909 2 Ch. 68 269, 306, 320, 327, 330,
456, 463
Hatrimbhai v. Framroz (1927), 51 Bom. 561 670
Hayward v. Pavement Light Co. (1884), 1 R.P.C. 207 .... 727
Heald's Patent (1891), 8 R.P.C. 429 255
Heap v. Hardley (1889), 6 R.P.C. 495 (C.A.) 651
Heath and Frost Re (1886), Griffin P.C. 288 401, 410
Heath v. Smith (1854), 3 E.L. & B.L. 256 187
Heath v. Union (1884), 2 Webs. P.C. 277; 3 E. & B. 272; (1844), 5
H.L.C. 537; (1844), 15 Sim. 533 177, 245, 579
Henser & Guignard v. Hardie (1894), 11 R.P.C. 421 . 575
Hickson v. Redfern (1905), 22 R.P.C. 307 248
Higgins Applications (1892), 9 R.P.C. 74 265
Hill Re (1888), 5 P.O.R. 286 401
Hills v. London Gas Light Co., 1 Goodwes P.C. (1884 Edn.) 244; 5 H.
& N. 312 . 151, 185
Hill v. Thomas & Sons (1907), 24 R.P.C. 415 (C.A.) . ... 248
Hill v. Thompson, 8 Taunt 401; (1817), 1 W.P.C. 235 . . 171, 222, 721
Hinks & Son v. Safety Lighting Co. (1876), 4 Ch.D. 607 . . 159, 625
Hocking v. Hocking (1886), 3 R.P.C. 291 545
Hoffman v. Postill (1869), 4 Ch. App. 673 754
Hoffnung & Sons v. Salisbury, 16 R.P.C. 375 815, 827
Holophane Ltd. O’Clearly and Davis v. O. Berend & Co. Ltd. (1898),
15 R.P.C. 18 720
Hook v. Administrator General of Bengal & Ors. (1921), 48 Cal. 499;
48 I.A. 187 703
Hookham, Re (1886), Griffin A.P.C. 32 401
Ilookham v. Johnson, 14 R.P.C. 525 235
Hop Extract Co. Ltd. v. Horst (1919), 36 R.P.C. 177 ... 256
Hopkins Case (1910), 27 R.P.C. 72 ... 151, 385, 387, 389, 392
Hopkins Patent (1897), 14 R.P.C. 5 515
Home v. Johnson Bros., 38 R.P.C. 366 827
Horrocks v. Stubbs (1895), 12 R.P.C. 540 703
Index of cases mv
Pace.
Horsby v. Knighton’s Patent, In n (1869), L.R. 8 Eq. 475 . 576
Horstman, Horstman & Edgars Patent (1929), 46 R.P.C. 1 . 527
Househill Coal & Iron Co. v. Neilson (1843), 9 C. & F. 788; (1843),
1 Web P. C. 6735; (1843), 1 Web P.C. 719 . . 158, 190, 252
Hudson Scott & Sons v. Baninger, Wallis & Manners Ltd. (1906), 23
R.P.C. 79 188, 193, 562
Hughes Kenaugh’s Application (1910), 27 R.P.C. 281 .... 418
Humperson v. Syer (1887), 4 R.P.C. 407 (C.A.) . .190, 199, 205
Humphrey’s Patent, 1 Web P.C. 7 169
Huntoon Co. v. Kolynos Inc. (1930), 47 R.P.C. 403 (C.A.) ... 577
Hutchinson v. Pattulo (1888), 5 R.P.C. 351 (H.L.) .... 767
I. G. Ferbenindustrie Aktiengesellschaft Application (1929), 46 R.P.C.
271; (1933), 50 R.P.C. 249 136
I. G. Perett Application (1932), 49 R.P.C. 406 . . . 258, 264
Ilgner’s Patent (1909), 26 R.P.C. 198 327, 463, 467, 468, 469
Imperial Bank of India v. Bengal National Bank (1911), 58 Cal. 136 588
Incandescent Gas Light Co.’s Patent (Meteor Petition) (1898), 15 R.P.C.
727 310, 468
Incandescent Gas Light Co. v. Brogden, 16 R.P.C. 179 .... 581
Incandescent Gas Light Co. v. New Incandescent Mantle Co. Ltd., 15
R.P.C. 81 581
Incandescent Gas Light Co. v. Sunlight Incandescent Co. Ltd., 14 R.P.C.
180 816, 823
Incandescent Gas Light Co. v. The De Mare Incandescent Gas Light
System Ltd. (1896), 13 R.P.C. 301 (C.A.) 609, 784
Incandescent Gas Light Co. v. Thomas Sluce (1900), 17 R.P.C. 173
(C.A.) L 788
Indian Casablancas High Draft Co. v. M'llowners Association of
Ahmedabad (1935), 59 Bom. 564; 37 Bom.L.R. 187 . . 509, 514, 527
Indian Vacuum Brake Co. Ltd. v. E. G. Luard (1926), 53 Cal. 306 760
Ingersoll Sergeant Drill Co. v. Consolidated Pneumatic Tool Co. Ltd.
(1908), 25 R.P.C. 61 623
International Bitumens Emulsions Ltd. for the Revocation of Dehn’s
Patent, In the matter of Petition of (1932), 49 R.P.C. 368 . . 422, 432
International Harvester Co. v. Peacock, 25 R.P.C. 763 .... 235
Inventions and Designs Act, In the matter of (1893), 23 Cal. 702 . 187
Jackson’s Patent (1903), 22 R.P.C. 384 262
Jameson’s Patent (1902), 19 R.P.C. 246 . 262, 446, 606, 443
James Yate Johnson Application (1930), 47 R.P.C. 361 . 123, 134, 416
Jivanlal Narsi v. Pirojshaw R. Vakaria & Co. (1933), 57 Bom. 364 761
Johnson's Patent (1909), 26 R.P.C. 52 326
Johnson v. Edge, 9 R.P.C. 142 (C.A.) 816
John Wright and Eagle Range Ltd. v. General Gas Appliances Ltd.
(1929), 46 R.P.C. 169 (C.A.) 177, 194
Jones v. Pearce (1832), W.P.C. 125 . 579
Jones v. Pealt (1861), 7 Jur. N. S. 978 757
P
xxw THE LAW OF PATENTS IN INDIA
Page.
Jottrand’s Patent (1909), 26 R.P.C. 830 331
Jourdain v. Palmer (1836), 12 Jur. N.S. 214 754
Julius v. Lord Bishop of Oxford (1879), 4 Q.B.D. 245; (1879), 4 Q.B.D.
525 (C.A.) 82, 88
Junkers v. Ford Motor Co. Ltd. and Cooper (1932), 49 R.P.C. 347 . 748, 749
Jupc v. Pratt (1837), W.P.C. 145 220
Kalipada De and Ors. v. Dwijpada Das and Ors. (1930), C.W.N. 201
(P.C.) 703
Kalooram Agarwalla v. Jonistha Lai Chuckroberty & Anr. (1936) 40
C.W.N. 161 675, 677, 680
Kantichandra v. Radha Raman (1930), 34 C.W.N. 275 .... 664
Kay v. Marshall (1839), 5 Bing.N.C. 501 171
Kaye v. Chubb & Sons Ltd., 4 R.P.C. 289 (C.A.) ; 5 R.P.C. 641 (H.L.) . 240
Kedemath Mondal v. Gonesh Chandra Adak (1907), 12 C.W.N. 446 668
Kelly v. Batch elar, (1893), 10 R.P.C. 289 . 575
Kelvin v. Whyte Thomson Co. (1908), 25 R.P.C. 177 770
Kents Patent (1909), 26 R.P.C. 666 331
Kessowji Domadar Jairam v. Luckmidas Ladha & Anr. (1889), 13 Bom.
404 682
Kestos Ltd. v. Kempat Ltd. and Anr. (1936), 53 R.P.C. 139 581
Killen v. MacMillan (1932), 49 R.P.C. 258 783
The King v. Arkwright, Webster’s Patent Cases 64 ... 243
The King v. Comptroller General of Patents exparte Muntz (1922), 39 ’
R.P.C. 335 137, 415, 417
King v. Legislative Committee of the Church Assembly, exparte Haynes
Smith (1928), 1 K.B. 411 801
King v. Minister of Health, exprate Davis (1929), 1 K.B. 619 792
King v. North exparte Oakey (1927), 1 K.B. 491 .... 802
KoOps, exparte (1802), 6 Ves. 595 228
Koramall Ram Ballav v. Mong'lai Dalimchand (1919), 23 C.W.N. 1017 . 762
Krishna v. Corporation of Calcutta (1904), 31 Cal. 993 653
Kurtz v. Spence, 5 R.P.C. 161 815
Lakes Application (1888), 5 R.P.C. 415 265
Lake’s Patent (1909), 26 R.P.C. 443 329
Lallubhai Chakubhai v. Chimanlal Chunilal & Co. (1935), 37 Bom.L.R.
665 ........... 711
Lallubhai Chakubhai Jarivala v. Shamaldas Sankalchand Shah (1934),
36 Bom.L.R. 881 154, 186, 189, 192
Lancashire Explosives Co. v. Roburite Explosives Co. Ltd. (1895), 12
. R.P.C. 470; (1896) 13 R.P.C. 429 781, 788
Lancaster, Re (1884), Griffin P.C. 293 . . 401
Land’s Patent (1910), 27 R.P.C. 481 532
Lane Fox v. Kensington and Kn'.ghtsbi idge Electric Lighting Co. Ltd.,
9 R.P.C. 413 132
hang v. Gisborne, 31 L.T. Ch. 769; 31 Beav. 133 . " . 195, 196, 199
INDEX OF CASES
xxvii
Page.
Lanston Monotype Corporation Ltd. v. Martin J. Slatterey (1919), 36
R.P.C. 307 775
Lauri v. Renad (1892), 3 Ch. 402 656
Lawson v . Donald Macpherson & Co. Ltd., 14 R.P.C. 696 . 572
Leeds Forge Co. Ltd. v . Deightons Patent Flue and Tube Co. Ltd.
(1901), 18 R.P.C. 233 774
Levinstein’s Petition (1896), 15 R.P.C. 732 312
Lewis v . Morling (1829), 10 B. & C. 27; (1829), W.P.C. 490 . . 171, 190
Lifeboat Co. v. Chambers (1891), 8 R.P.C. 418 190
Linotype & Machinery Ltd. v. Hopkins (1910), 27 R.P.C. 109 (H.L.) 235
Lister v. Norton Bros. & Co. Ltd. (1886), 3 R.P.C. 208; (1885), 2
R.P.C* 68 185, 754, 756
L’Oseau et Pierrard, Re (1887), Griffin A.P.C. 36 ... 401
London C. C. v. A. G. (1902), A.C. 165 . . 441
Louis Renault’s Application (1924), 4 R.P.C. 649 .... 134
Luna Advertising Co. Ltd. v. Burnham & Co. (1928), 45 R.P.C. 258 . 815, 818
Lynch v. Philips, 26 R.P.C. 389 (I.H.) 235
Lyon v. Goddard (1894), 11 R.P.C. 113 553
Lyon v. Mayor etc. of Newcastle-upon-Tyne (1894), 11 R.P.C. 218 722
Lyon’s Patent (1894), 11 R.P.C. 537 512
M/s Application (1924), 41 R.P.C. 159 124, 125
Macevoy, Re (1888), 5 P.O.R. 285 401
Machinenfabrik Augsberg-Nurmberg A. G. in the matter of Patents of
(1930), 47 R.P.C. 193 514,525
Mackie v. Berry (1885), 2 R.P.C. 149 759
Mahadeo Lai Natharmull v . Rani Sonabati Kumari (1936), 40 C.W.N.
165; (1936) 40 C.W.N. 719 678
Mahomed Asan Maracair v . Bijle Sahib Bahadur (1934), 66 M.L.J. 367 . 797
Mahomed Haji Hamed v. Jute & Gunny Brokers Ltd. (1931), 33
Bom.L.R. 1364 682
Maley & Taunton’s Application (1932), 49 R.P.C. 47 ... 265
Maphabale v. Kunhanna (1898), 21 Mad. 373 660
Marconi British Radio Telegraph Co. Ltd. (1911), 28 R.P.C. 181 613
Marconi v . Halsby Wireless Telegraph Co. Ltd. (1914), 31 R.P.C. 121 . 759
Marks Patent (1908), 25 R.P.C. 553 262
Marshall and Naylors Patent (1900), 17 R.P.C. 553 . 255
Maruthamuthu Pillai v . Krishnamacharian (1906), 30 Mad. 148 . 759
Matthey’s Patent, Web PJB. 6 • 169
Max Muller’s Patent (1907), 24 R.P.C. 465 445, 448
Maynard v . Consolidated Kent Collieries Corporation Ltd. (1903), 19
T.L.R. 448 .590
McCormick v. Gray (1861), 7 H. & N. 25 171
McDougall Bros. v. Partington (189a), 7 R.P.C. 351 (C.A.) 748
Mclnemy v. Secretary of State for India (1911), 38 Cal. 797 . . 699
McLeay v . Lawes (1905), 22 R.P.C. 199 . . 190‘
McNeil’s Application (1907), 24 R.P.C. 680 (1912A) ... . , 265
THE LAW OF PATENTS IN INDIA
ttvui
Pace.
M. D’Cruz & Ors. v. Secretary of State for India in Council, 40 C.W.N.
865 699
Mechanical & General Invention Co. Ltd. (In Liqn.) v. Austin & Others
(1935), 153 Law Times 153 256
Mellin v. Mon'.co (1877), 3 C.P.D. 142 750
Mellor v. William Beardmore & Co. Ltd. (1926), 43 R.P.C. 361; (1927),
44 R.P.C. 175 256
Mercedes Patent (1910), 27 R.P.C. 762 332
Mercedes Daimler Motor Co. Ltd. v. Maudslay Motor Co. Ltd. (1915),
32 R.P.C. 149 652
Mergenthaler Linotype Co. v. Intertype Ltd. (1926), 43 R.P.C. 239
(C.A.) 774
Meteors Petition see Incandescent Gas Light Patent (1898), 15 R.P.C.
727 310, 468
Meters Ltd. v. Metropolitan Gas Meters (1907), 24 R.P.C. 506 789
Meurs-Gerkins Application (1910), 27 R.P.C. 565 .... 263, 265
Meyer’s Application (1899), 16 R.P.C. 526 409
Minter v. Wells (1834), W.P.C. 127 770
Minter v. Williams (1835), 4 A. & E. 251 562
Mohomed Hasham & Co. in re. (1922), 24 Bom.L.R. 861 592
Mooney’s Application (1927), 44 R.P.C. 294 ... 195, 199, 200
Moore v. Bennett (1884), 1 R.P.C. 129 (C.A.) .235, 750, 759
Morgan and Windover (1898), 7 R.P.C. 446 248
Morgan v. Seaward (1837), W.P.C. 187 220, 221
Morgan’s Patent (1887), 5 P.O.R. 186; (1888), 5 R.P.C. 186 . .410, 445
Moser v. Jones & Co. (1893), 10 R.P.C. 368 716
Moser v. Marsden (1893), 10 R.P.C. 350 336
Muirhead v. Commercial Cable Co. (1895), 12 R.P.C. 52 627
Mullins v. Hart (1852), 3 Car. & K. 297 . 188
Muniswami Chetty v. The Board of Revenue, Land Revenue &
Settlement, Madras and the^Collector of Chittoor (1931), 61 M.L.J.
479 797
Muntz Exparte (1922), 39 R.P.C. 335 413, 415, 421
Muntz v. Foster (1844), 2 Web. P.C. 112 171, 761
Murex Welding Processes Ltd. v. Weldrics (1922) Ltd. (1933), 50
R.P.C. 178 704, 767
Naba Kumar v. Radhashyam (1931), 35 C.W.N. 977 . 664
Nagamoni Mudaliar v. Janakiram Mudaliar (1895), Mad. 142 .. 682
Nahnsen’s Application (1900), 17 R.P.C. 203 153
National Carbon Co. Inc., In re (1933), 38 C.W.N. 729; 61 Cal
450 491, 797, 804
National Carbon Co. Inc Patent and Bright Star Battery Co. (1934),
38 C.W.N. 729 81
National Carbon Co. Inc. v. Brough and Co. Ltd. & Anr., Suit No. 2882
of 1931 . ... 211
National Society for the Distribution of Electricity by Secondary
Generators v. Gibbs (1899), 2 Ch. 289 . . 656
INDEX OP CASES xxix
Pack.
National Colour Kinematograph Co. Ltd. v. Bioschemes Ltd. (1915),
32 R.P.C. 256 236, 238
Needham v. Johnson (1884), 1 R.P.C. 58 ' 616
Neilson’s Patent (1841), W.P.C. 273 726
Neilson v. Thompson (1841), W.P.C. 225 723, 725
Newall v . Elliot (1864), 10 Jur. N.S. 954 1 H. & C. 797 ; 32 L.J. Ex.
120 553, 703
Newall v. Wilson (1852), 2 De G.M. & G. 282 724
New Things Ltd. Application (1914), 31 R.P.C. 45 . 405, 406
Nichals v. Ross (1849), 8 C.B. 679 770
Nobels Explosives Co. v. Jones Scott & Co. (1881), 17 Ch.D. 721 . . 565, 567
Nobin Chunder Dey v. Secretary of State for India (1875), 1 Cal. 11 . 699
No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935), 53 R.P.C. 236;
52 R.P.C. 231 (C.A.) .... 231, 240, 241, 243, 245, 246, 556
North British Rubber Co. v. Gormully & Jeffery Manufacturing Co.
(1894), 12 R.P.C. 17 723, 726
North British Rubber Co. v. Mackintosh & Co. Ltd. (1894), 11 R.P.C.
477 750
North Eastern Marine Engineering Co. v. Leeds Forge Co. (1908), 23
R.P.C. 529 (C.A.) 783
Nundo Lall Bose v. Corporation of Calcutta (1885), 11 Cal. 275 . 796
N. V. Philips Gloeilampenfabriken Application (1933), 50 R.P.C. 167 . 390
Osborn's Patent (1909), 26 R.P.C. 819 331
Osmond v. Hirst (1885), 2 R.P.C. 265 722
Osram Lamp Works Ltd. v. Popes Electric Lamp Co. (1917), 34 R.P.C.
369 (H.L.) . 242, 755
Osram Lamp Works Ltd. v . "Z” Electric Lamp Manufacturing Co. Ltd.
(1912), 29 R.P.C. 401 193
Otto v . Linford (1882), 46 L.T. (N.S.) 35 221, 241, 617
Otto v . Steel (1885), 31 Ch.D. 241 195, 195, 210
Oxley v. Holden (1860), 8 C.B. (N.S.) 666; 30 L.J. C.P. 68 . 188
P/s Application (124), 41 R.P.C. 201 125
P. & O. Steam Navigation Co. v. Secretary of State for India (1861),
5 Bom.H.C.R. App. A, p. 1 699
Parkes v . Stevens (1869), L.R. 8 Eq. 358 239
Parkinson v. Simon (1895), 12 R.P.C. 403 (H.L.) .... 772
Patent Exploitation Co. v . Siemens Bros. & Co. Ltd., 21 R.P.C. 541
(H.L.) # . . 235
Patent Type Founding Co. v. Walter, 8 W.R. 353 . 748
Patterson v. Directors of Gas Light & Coke Co. (1875), 3 AjC. 239
(H.L.) 170, 195, 205
Peck v . Hinds (1898), 15 R.P.C. 113 . 807
Penn v. Jack (1866), 14 L.T. 495 770
Penugohda Venkataratnam v. Secretary of State for India in Council &
Ors. (1930), 53 Mad. 979 .
797
XXX THE LAW OF PATENTS IN INDIA
Page.
Performing Rights Society v . London Theatre of Varieties (1924), A.C
113 . 591
Perretts Application (1932), 49 R.P.C. 406 258, 264
Perry & Brown’s Patents (1931), 48 R.P.C. 200 . 511, 512, 516, 526
Perry v. La Society de Lunetiers (1896), 13 R.P.C. 661 . 235, 722
Peru v. Bibly, L.R. 3 Eq. 398 778
Pessers & Moody v. Haydon & Co. (1909), 26 R.P.C. 58 161
Pessers & Moody, Wraith and Gurr Ltd. v. Newell & Co. (1914), 31
R.P.C. 510 555, 562, 780
Peter Pilkington Ltd. v. Massey (1904), 21 R.P.C. 697 ... 784
Philpot v . Hanbury (1885), 2 R.P.C. 33 221, 223
Pickard v . Prescott (1892), 9 R.P.C. 195 (H.L.) 215
Pilkington t/. Yeakby (1901), 18 R.P.C. 459 205, 770
Pittwell & Co. v . Brackelsbury Melting Processes Ltd. 49 R.P.C. 73 . 827, 828
Plimpton v . Macolmson (1876) 3 Ch.D. 562 . 195, 199, 200, 202, 206
Plimpton v . Spiiler (1876), 6 Ch.D. 412; (1876), 4 Ch.D. 286
(C.A.) 195, 199, 617, 722
Pneumatic Tyre Co. Ltd. v. Caswell (1896), 13 R.P.C. 164 . 248
Pneumatic Tyre Co. v. Goodman & Son (1896), 13 R.P.C. 723 726
Pneumatic Tyre Co. Ltd. v. R. F. Chisholm & Co. (1896), 13 R.P.C.
488 711
Pneumatic Tyre Co. v. Warrilow (1896), 13 R.P.C. 284 723
Porter v. Freudenberg (1915), 1 K.B. 857 652
Poulton v. Adjustable Cover & Boiler Block Co. (1908), 2 Ch. 430 . 604, 607
Price v . Yorkstreet Flex Spinning Co. (1893), 10 R.P.C. 34 220
Proctor v . Bayley & Son (1889), 6 R.P.C. 106 and on appeal 6 R.P.C.
538 555
Proctor v. Bennis (1887), 4 R.P.C. 363 (C.A.); L.R. 36 Ch. Div.
740 235, 545, 613, 725
Pugh v . Riley Cycle Co. Ltd. (1913), 30 R.P.C. 32: 30 R.P.C. 514
(C.A.) v 218
Queen v. Prosser (1849), 18 L.J. Ch. 35 444
R.’s Application (1923), 40 R.P.C. 465 126
R. v. Eastern Archipelago Co. (1853), 1 E. & B. 310 . 437
R. v. Eastern Archipelago (1854), 4 D.M. & G. 199 437
R. v . Maguire & O’Shail (1923), 21 R. 58 798
R. v. Registrar of Joint Stock Companies (1888), 21 Q.B.D. 131 . 591
R. v. Wheeler (1819), 2 B. & Aid. 345; 106 E.R. 392 . . 113, 114
Rat Radhika Mohan Roy Bahadur v. Bobani Prosanna Lahiri & Ofs
(1936), 40 C.W.N. 717 678, 681
Ralston’s Patent (1909), 26 R.P.C. 313 258
Ralston v. Smith (1865), 11 H.L.C. 224; 11 E.R. 1318 . . . . 113, 114
Ramchandra Rao v . Ramchandra Rao (1922), 45 Mad. 320; 49 1 A: 129 . 703
R. B. Cs Application (1924), 41 R.P.C. 156 . 126
Reg. v . Local Government Board (1882), 10 Q.B.D. 309 791
Reg. v. London Country Council (1893), Q.B. 454 T . . » ■ 800
INDEX OF CASES *xxi
Page.
Reg. v . Tithe Commissioners, 14 Q.B. 474 . 84
Reihl’s Patent (1922), 39 R.P.C. Appendix iii 534
Rene Clavel’s Application (1928), 45 R.P.C. 222 ... 404, 410
Rex v . Clerkenwell Commissioners of Taxes (1910), 2 K.B. 879 . 800
Rex v. Electricity Commissioners (1524), 1 K.B. 171 798, 801
Rex v. Inhabitants in Glamorganshire, 1 L.D. Raym. 580 799
Rex v, Light Railway Commissioners (1915), K.B. 536 800
Rex v . Muirhead and Comptroller General (1927), 44 R.P.C. 28 . 804
Rex v . North Worcestershire Assessment Committee Exparte
Hadby (1929), 2 K.B. 397 791
Reynard v. Levinstein (1864), 11 L.T. 79 754
Reynolds v. Herbert Smith & Co. Ltd., 20 R.P.C. 123 . 133
Rheostatic Company Ltd., The v. Robert McLaren & Co. Ltd. (1936),
53 R.P.C. 109 612
Robertson & Purday (1907), 24 R.P.C. 273 . . 176, 178, 181, 182, 239
Rochester Corporation v. R. (1858), E. B. &. E. 1024 .... 791
Rodricks v. Secretary of State (1913), 40 Cal. 308 .... 701
Rollins v . Hinks, (1872), L.R. 13 Eq. 355 806, 808
Rolls v . Isaacs (1881), 19 Ch.D. 268 172
Roopchand Ranglldas v. Haji Hoosein Haji Mahomed Soudagar, 16
Bom. L.R. 204 706
Rothwell v. King (1887), 4 R.P.C. 76 726
Ross v. Secretary of State for Indian in Council (1913), 37 Mad. 55 699
Rowland and Kennedy v. The Air Council (1925), 42 R.P.C. 433 . 218
R. S. Naidu v. J. Ramier (1926), 51 M.L.J. 701 797
Rucher v . London Electric Supply Corporation Ltd. (1900), 17 R.P.C.
279 196
Ruth Aldo Co. (Inc.) Application (1933), 50 R.P.C. 253 . . 384, 532
R. W. Crabtree & Sons Ltd. v. R. Hoe & Co. Ltd. (1935), 52 R.P.C. 367 . 236
Rylands v. Ashby’s Patent (machine made) Bottle Co. (1890), 7
R.P.C. 175 (C.A.) 754
S. ’s Application (1923), 40 R.P.C. 461 143, 418
Saccharin Corporation Ltd. (1902), 19 R.P.C. 169 (C.A.); (1903), 20
R.P.C. 454 (C.A.) ; (1903), 20 R.P.C. 611; (1905), 22 R.P.C. 246 . 662
Saccharin Corporation Ltd. v . Anglo-Continental Chemical Works Ltd.
(1900), 17 R.P.C. 307 558
Saccharin Corporation v. Haines Ward & Co. (1898), 15 R.P.C. 344
(C.A.) 755, 756
Saccharin Corporation Ltd. v. National Saccharin Co. Ltd. (1911), 28
R.P.C. 291; (1909), 26 R.P.C. 737: (1910), 27 R.P.C. 354 (C.A.) . 333, 771
Saccharin Corporation Ltd. v. Quincey, (1900), 17 R.P.C. 337 .. . 558
Saccharin Corporation Ltd. v. Reitmeyer Co. (1900), 17 R.P.C. 606 570
Samuel Parker & Co. Ltd. v . Cocker Bros. Ltd. (1929), 46 R.P.C. 241 . 776
Sankaranarayana Pillai v . Ahmed Miran Sahib (1934), 66 M.L.J. 601 . 797
Sarason v. Frenay (1914), 31 R.P.C. 252 767
Satya Kripal (1909), 10 Cal.L.J. 503 588
Savage v. Brindle (1896), 13 R.P.C. 266 580, 581
ftxxii THE LAW OF PATENTS IN INDIA
Page.
Schuster v . Hine Parker & Co. Ltd. (1935), 52 R.P.C. 345 . 549
Scott’s Patent (1903), 20 R.P.C. 257 . .262, 619
Scott v. Hull Steam Fishing and Ice Co. Ltd. (1897), 14 R.P.C. 143 570
Seaward v . Patterson (1897), 1 Ch. 545 788
Secretary of State for India in Council v. Cockcraft (1914), 39 Mad. 351 . 699
Secretary of State for India in Council v. Golabrai Paliram (1932),
59 Cal. 150; 35 C.W.N. 930 680, 682
Secretary of State for India in Council v. Hari Bhanji (1882), 5 Mad.
273 699
Secretary of State for India in Council v. Moment (1913), 40 Cal. 391 . 699
Secretary of State for India in Council v . Ramnath Bhatta
(1933), 37 C.W.N. 957 . . 699
Secretary of State for India in Council t/. Shree Gobinda
Chaudhuri (1931), 59 Cal. 1289 699
Seed v. Higgings (1858), 27 L.J. (Q.B.) 417 579
Seshagiri Row v . Oskur Jung (1907), 30 Mad. 438 676
Shama Kanto Chatterjee v. Kusum (1917), 44 Cal. 10 . 683
Shanmugar Mudaliar v. Subbaraya Mudallar (1932), 63 M.L.J. 932 797
Sharifa v . Munekhar (1901), 25 Bom. 574 653
Shaw v. Jones (1897), 6 R.P.C. 328 246
Sheehan v . Great Eastern Railway Co. (1880), 16 Ch.D. 59 . . 654
Shivabhanjan Durgaprosad v. Secretary of State for India (1904), 28
Bom. 314 699
Shoe Machinery Co. Ltd. v. Cutlan (1895), 12 R.P.C. 530
(C.A.) ; (1896), 1 Ch. 667; 13 R.P.C. 141 . . . 443, 445, 606, 704
Shone’s* Patent (1892), 9 R.P.C. 438 512
Siddell v. Vickers Sons & Co. Ltd. (1889), 6 R.P.C. 464 . 779
Sidebottom v. Fielden (1891), 8 R.P.C. 266 748
Sirdar Rubber Co. and Maclulich v. Wallington, Weston & Co.
(1905), 22 R.P.C. 357 254
Sirdar Rubber Co. v. Wallington, Weston & Co. (1907), 24
R.P.C. 539 (ILL.) 554
Skinner & Co. v. Perry 10 R.P.C. 1 (C.A.) ; 11 R.P.C. 406 . . 815. 827
Smith’s Patent (1912), 29 R.P.C. 339; (1905), 22 R.P.C. 57 . . 248, 253
Smith v, Grigg Ltd. 716, 720
Smith v . London & North Western Railway Co 654
Sm'.th v. Upton 761
Societe Anonyme du Generataur du Temple’s Application (1869), 13
R.P.C. 54 348
Societe Anonyme de Manufactures de Glaces v . Tilghur . . 575
Societe des Usines Chimiques Rhone-Poulenc Case (1933), 50R.P.C. 230 . 381, 385
Solaflex Signs Amalgamated Ltd. v. Allan Manufacturing Co.
Ltd. (19$1), 48 R.P.C. 577 748
Solanite Sign Ltd. v. Wood, 50 R.P.C. 315 827
Spaule v. Monopole Co. (190S), 23 R.P.C. 647 722
Spencer v. Ancoats Vale Rubber Co. Ltd. (1889); 6 R.P.C. 46 788
Spencer v. Holt (1903), 20 R.P.C. 281 265
Speils Application (1888), 5 R.P.C. 281 265
INDEX OF CASES xxsiii
Page.
Srinivasa Moorthy v. Venkata Varada Ayyangar (1905), 26 Mad. 239;
(1911), 15 C.W.N. 741 (P.C.) 670
Sri Sri Sri Rathnamala Pattamahadevi Zemindarini of Mandasa v. The
Ryots of Mandasa Zamindari (1933), 56 Mad. 579 797
Stahlwerk Becker A.G. (1917), 34 R.P.C. 344 756
Stead v . Anderson (1847), 2 W.P.C. 156 579
Steer v. Rogers (1893), A.C. 232 657
Stevens v. Keating [unreported: see Heath v. Unwin (1847), 15 Sim.
552 at p. 553] 579
Stewarts Application (1896), 13 R.P.C. 627 409
Stephenson Black Co. v. Grant etc. (1917), 34 R.P.C. 192 . 767
Stepney Spare Motor Wheel Ltd. v . Hall, 28 R.P.C. 381 . . 823
Stoney’s Patent (1888), 5 R.P.C. 313 512
Sturtz v . De La Rue (1822), 5 Russ 322 721
Sundara Rajan v. Kuppasami Iyer (1914), 27 Mad.LJ. 573 . 543
Sunder Spinner and Anr. v. Makan Bhula (1922), 46 Bom. 130 . 706
Sunlight Incandescent Gas Co. v. Incandescent Gas Light Co. (1897),
14 R.P.C. 757 221
Surendra Mohan Ray Chaudhuri v, Mohendranath Banerji (1932), 59
Cal. 781 591
Sykes v. Howarth (1879), 48 L.J. (C.H.) 769 581
T.’s Application (1925), 42 R.P.C. 506 398
Tagore v. Tagore (1872), 1 I. A. Supp. 47 591
Tangye v. Scott, 14 W.R. 386 . 190
Taylor's Patent (1912), 29 R.P.C. 296 332
Templeton v. Macfarlane (1848), 1 H.L.C. 595 171
Tender v. Stevenson (1898), 15 R.P.C. 24 809
Tenants Case, 1 Webs 125 177
Thermos, Ltd. v. Isola Ltd. (1910), 27 R.P.C. 195 (C.A.) ... 333
Thomas v. Welch (1866), L.R. 1 C.P. 192 239
Thompson v. Macdonald & Co. (1891), 8 R.P.C. 5 248
Thompson v. Moore (1889), 6 R.P.C. 426; (1890), 7 R.P.C. 325 . 704
Thorston Nordenfelt v . Gardner (1884), 1 R.P.C. 61 (C.A.) . . 239, 772
Three Town Baking Co. v. Maddever (1884), 27 Ch.D. 523 725
Tomlin v . Acme Engineering Co. Ltd, (1934), 51 R.P.C. 117 145
Tomlison, Expert e (1899), 16 R.P.C. 233 409
Toremull Dilsook Roy v. Kunj Lall Monohar Dass ( 1920) , 31 C.L J. 162 759
Townsend v. Haworth (1875), 48 L.J. Ch. 770; (1879), 12 Ch.D. 831
(Note) 558, 559
Traction Corporation Ltd v. Bennett (1908), 25 R.P.C. 819 . 445, 783
Tranton's Patent (1917), 34 R.P.C. 28 511
Trautner v. Patmore (1912), 29 R.P.C. 60 720
Trico Products Corporation and Trico-Folberth Ltd. v. Romac Motor
Accessories Ltd (1934), 51 R.P.C. 90 652
Tubeless Pneumatic Tyre & Capon Heaton Ltd. v. Trench Tubeless Tyre
- Co. Ltd (1899), 16 R.P.C. 291 772
Tubes Ltd v. Perfects Steel Tube Co. Ltd. (1903), 20 R.P.C 77 (H.L.) . 235, 239
xxxiv
THE LAW OF PATENTS IN INDIA
Page.
Tuljaram Row v. Alagappa Chettiar (1910), 35 Mad. 759
Turner v. Bowman (1925), 42 R.P.C. 29 . 654
Tweedale v. Ashworth (1892), 9 R.P.C. 127 626
Ucar’s Patent, In re (1922), 39 R.P.C. 269 . ... 390
Udoy Chand Pannalal v . Khetsidas Tilokchand (1924), 28 C.W.N. 916 . 764
Underfeed Stoker Co. Ltd. Application (1924), 41 R.P.C. 622 . 195, 199
Ungar v. Sugg, 8 R.P.C. 388; 9 R.P.C. 113 (C.A.) .... 827
Union Electrical Power Co. v. Electrical Power Storage Co., 5 R.P.C. 329 . 826
United Horse Shoe and Nail Co. Ltd. v. Steward & Co. (1885), 2
R.P.C. 122; (1888), 13 A.C. 401 (H.L.) 558, 777
United Telephone Co. v. Bassano (1886), 3 R.P.C. 311 221
United Telephone Co. v. Equitable Telephone Association (1888), 5
R.P.C. 233 723
United Telephone Co. v. Henry & Co. (1885), 2 R.P.C. 11 . 563
United Telephone Co. v. Mottishead (1886), 3 R.P.C. 213 . 767
United Telephone Co. & Ors. v. London & Globe Telephone & Mainte-
nance Co. Ltd. (1884), 1 R.P.C. 117 563
United Telephone Co. v. Sharpies (1885), 2 R.P.C. 28 . . 553, 559
United Telephone Co. v. Tasker (1888), 5 R.P.C. 628 . 726
United Telephone Co v. Walker & Anr. (1887), 4 R.P.C. 63 . . 778, 781
Urban v. Commissioners of India Revenue (1912), 29 T.L.R. 141 . 590
Vaghoji Kuverji v. Comaji Bomaji (1905), 29 Bom. 249 683
Vangelder’s Patent (1889), 6 R.P.C. 22 804
Venkata Narasimha Rao Bahadur v. Municipal Council of Narasaropet
(1931), 60 Mad.L.J. 260 797
Venkataratnam v. Secretary of State for India (1930), 53 Mad. 979 798
Vickers Sons & Co. Ltd. v. Siddel (1898), 7 R.P.C. 292 (H.L.) . 239
Vidal Dyes Syndicate v. Levinstein (1912), 29 R.P.C. 245 (C.A.) . 223
Vidal Dyes Syndicate v. Read Holliday & Sons Ltd. (1911), 28 R.P.C.
322 l 333
•
W.’s Application (1914), 31 R.P.C. 141 ... 123, 124, 128, 142
W. L.’s Application (1924), 41 R.P.C. 617 133
W. R.’s Application (1924), 41 R.P.C. 216 124
Wadham's Application (1910), 27 R.P.C. 172 418
Wainwright’s Case— Ruling by Comptroller General Ruling 1912(E),
29 R.P.C. Appendix XI 137, 418, 420
Wakfer and Peek’s Application (1913), 32 R.P.C. 199 .... 389
Walseback Incandescent Gas Lighting Co. v. New Incandescent (Sunlight
Patent) Gas Lighting Co. Ltd. (1900), 17 R.P.C. 287 . 221
Walton v. Lavater (1860), 29 L.J. (C.P.) 279 579, 657
Walton v. Potter (1841), W.C.P. 597 167
Ward’s Application (1911), 29 R.P.C. 79 127
Ward’s Case, 29 R.P.C. 79 ... 126
Ward Bros. v. Hill (1903), 20 R.P.C. 189 220, 770
Waren v, Weild (1869), L.R. 4 Q.B. 730 806
INDEX OP CASES
xxxv
Page.
Warman’s Application (1885), Griff. L.O.C. 43 835
Watson Laidlaw & Co. Ltd. v. Pott Cassels and Williamson (1911), 28
R.P.C. 565 241, 244
Webb v. Levinstein, 15 R.P.C. 78 815
Webb v. Macpherson (1904), 31 Cal. 57 591
Weber’s Patent (1909), 26 R.P.C. 300 327
Weber v. Xetal Products Ltd. (1933), 50 R.P.C. 211 ... 770
Weldrex Ltd. v. Quasi Arc Co. Ltd., 39 R.P.C. 323 . . . . ' 816
Welsback Incandescent Light Co. Ltd. v. John McGrady & Co. (1901),
18 R.P.C. 513 761
Welsback Incandescent Light Co. Ltd. v. New Sunlight Incandescent Co.
Ltd. (1900), 17 R.P.C. 401 756
Wenham Gas Co. v. Champion Gas Lamp Co. (1892), 9 R.P.C. 49 (C.A.) 610
AVesley Richards v. Perks (1893), 10 R.P.C. 181 . 190
Western Electric Co. Ltd., In the matter of the Patent of (1933), 50
R.P.C. 59 442, 443, 448
Westby v. Tolley, 11 R.P.C. 602 189
Wheeler, In re (1925), 42 R.P.C. 509 405
Wheeler’s Application (1925), 42 R.P.C. 509 405
Wilderman v. F. W. Berk & Co. Ltd. (1925), 42 R.P.C. 79. . 558, 593
Williams v. Brodie, 1 Web. P.C. 75 239
Willoughby v. Taylor, 11 R.P.C. 45 815, 816
Wilson v. Union Oil Mills (1892), 9 R.P.C. 57 221
Wilson Bros. Bobbin Co. Ltd. v. Wilson & Co. (Barnsby) Ltd. (1903),
20 R.P.C. 1 220, 223
Wingquister Patent (1923), 40 R.P.C. 261 651
Wood v. Zimmer (1815), Holt 58 186
Woodrow v. Long Humphreys & Co. Ltd. (1934), 51 R.P.C. 25 (A.C.) . 147
Woolf v. Automatic Picture Gallery (1902), 19 R.P.C. 425 . 767
Worring an Kortenback’s Patent (1909), 26 R.P.C. 163 326
Worthington Pumping Engine Co. v. Moore (1903), 20 R.P.C. 41 . 256
Wright & Eagle Range Ltd. v. General Gas Appliances (1929), 46 R.P.C.
169 (C.A.) 177, 194
Wright v. Hitchcock (1869), L.R. 5 Ex. 37 558
Wylie and Morton’s Application (1896), 13 R.P.C. 97 . 152
Young v. White (1854), 22 L.J. Ch. 190 770
Ystradgunlais Commutation, In re, 8 Q.B. 32 799
COMPARATIVE TABLE.
Comparative Table showing* corresponding* though not neces-
sarily similar, Sections of the Indian Act (Act 2 of 1911) and of the
English Act (English Patents and Designs Acts, 1907 — 1932).
English Patents
*;
Indian Patents
English Patents
Indian Patents
& Designs Acts,
& Designs Act, »
& Designs Acts,
& Designs Act.
1907 — 1932.
1911.
1907 — 1932.
1911.
1
3
44
39
2
4
44A
—
3
5
45
40
4
—
46
—
5
47
41
6
48
42
. rr
•
5
62
55
8
5
63
56
8A
-
64
55(3)
9
6
65
57
10
7
66
58
11
9
67
59
12
10
68
60
13
11
69
61(1)
14
12
70
62
15
13
71
63
16
72
64
17
14
73
67
18
15
73A
74A
19
15A
75
69
20
16
76
66
21
17
77
65
22
18
78
71
23
19
79
—
24
_
81
73
25
26; 29(2)
82
—
26
24
83
74
27
22 & 23
83A
23A
28
20
84 !
—
29
21
85
—
30
21 A
86
77
31
35
87 |
f —
32
88
—
32A
35A
89
78
33
30
90
—
34
31
91
! 78A
35
32
92
2
36
36
92A
—
37
37
93 j
2
38
—
94 j
—
38A
—
95
‘ —
39
96
—
40
97
79
41
38
98
80
42
i (since repealed)
43
—
99
! 1
xxxviii THE LAW Of PATENTS IN INDIA
Indian Patents
English Patents
Indian Patents
English Patents
& Designs Act,
& Designs Acts,
& Designs Act,
& Designs Acts,
1911.
1907—1932.
1911.
1907—1932.
1
99
35A
32A
2
92 & 93
36
36
3
1
37
37
4
2
38
41
5
3; 6; 7; [8]
39
44
6
9
40
45
7
10
41
47(2)
9
11
42
48
10
12
55
62 & 64
11
13
56
63
12
14
57
65
13
15
58
66
14
17
59
67
15
18
60
68
15A
19
61
69
16
20
62
70
17
21
63
71
18
22
64
72
19
23
65
77
20
28
66
76
21
29
67
73
21A
30
68
74
22
27
(since repealed)
23
27
69
75
23A
83A
70
—
24
26(3)
71
78
25
—
72
80
26
25
(since repealed)
27
' —
73
81
28
—
74
83
29
25(3) as to
74A
73A
29(2)
75
—
30 j
33
76 !
—
31 |
34
77
86
32
35
78
89(5)
33 1
—
78A
91
34 |
. —
79
97
35 ;
31
;
l
INTRODUCTION.
In these days many eyes are turned towards the future of India :
watching the gigantic and unprecedented political experiment now
being made and eyeing its political result. Rut equally important
with its political development at this epoch is India's future development
in the commercial, agricultural and industrial spheres. It is not too
much to say that unless a satisfactory future for this country in these
respects is achieved, all political development will count for nothing.
In Bengal, especially, there is the widespread chronic complaint of
the perpetual unemployment of the Bhadralok young men : and all the
distress and evil consequences that follow from the fact that far the
greater proportion of that very material to which any country is
entitled to look for its greatest source of work, power and development,
lies unwanted and unused. Just as, in time of war, it is on this
man-power that a country depends principally for victory, so in time
of peace it is to them that the country should look primarily for its
prosperity. Only on this reasoning can the vast annual sums that
are spent in a civilised country on the education and maintenance of
its upper and middle class young men be economically justified,
in Bengal in its present condition this expenditure may be
criticised as being uneconomic: and, in fact, (except in so far as
it may be said to prove successful in promoting a standard of
knowledge, philosophy or conduct which, in itself, when valued for
its non-material worth, justifies its cost), it may be said to be entirely
unwarranted. The question to be solved remains the hitherto insoluble
question: how this highly educated man-power should be profitably
employed, or even employed at all.
To increase employment in Tndia it has long been recognised that
the growth of indigenous Indian industries should be promoted. A
policy of increased development of indigenous industries appears to
be being energetically pursued by Government. In pursuance of this
policy the Indian Legislature has in recent years passed into law many
Acts designed for the sole purpose of assisting the growth of new
Indian industries. One notable example is the tariff legislation
xl
THE LAW OF PATENTS IN INDIA
putting a practically prohibitive tax on the import into India of sugar;
whereby the starting-up of very many new sugar mills in India has
resulted, and it would be no exaggeration to say that a totally new
sugar-manufacturing industry has been actually created. Another
feature of Government assistance in pursuance of this policy has been
its legislation through numerous , individual Acts making grants in aid
of particular industries in India.
It would seem however that the danger to an individual or
company embarking on a new manufacturing industry on a small
scale lies in the direction of subsequent internal competition from
competitors in India, who will all eagerly start up in the same line
of manufacture, soon after they have seen him start, provided he is at
first successful. From this quarter a pioneer may apprehend just as
great a danger — and in the long run just as ruinous — as the competition
from competitors abroad. By the Tariff Acts the new manufacturer
is protected against competitors abroad: he is not protected at all
from wnat may be equally disastrous competition within India.
In England, before the industrial development of that
country became established, the original scheme of the Patent
system in England together with the charters to certain guilds and
City Societies, was to protect such a new manufacturer equally
against competition from outside or from within, during a specific
period over the first few years of his enterprise. This was to be a
reasonable reward for his pioneering risk. May it not be that India is
now at a stage of industrial development, when some such protection
to new manufacturers would be nothing but beneficial to the country?
Is not a judicious system for the granting of protection against
undue internal competition the reasonable, if not the essential, corollary
to tariff protection? Having eliminated the risk of undue competition
from the overseas manufacturer, is it not only the next logical step
to eliminate also the feature of the risk, equally great and equally
incalculable in practical business, of undue and speculative competition
from financial adventurers inside India? May it not otherwise be
found that the elimination of the one without the elimination of the
father will fail to be fully effective in achieving the main purpose
of encouraging the healthy growth of fresh industries ; because of its
failure in many instances to afford the requisite margin of safety
INTRODUCTION
M
which may be expected to . prevail on the mind of the. potential new
manufacturer to. induce him to risk his capital on. a. new venture?
The Patent system contains means which may be readily utilised
for the purpose of eliminating this risk to a great -extent for the
pioneer: furthermore it contains means which may be effectively utilised
to afford ample protection for the public against any abuse of any
monopoly by the Patentees.
It is to be observed that a valid Patent can only be obtained for
a matter which is within the meaning of Patent Law “a manner of
new manufacture.” By “new” is meant new in India: no matter
whether the thing is old or well-known outside India. This principle
is well established. Unfortunately if the description of a thing ha 3
been published on paper in India this prevents its being regarded as
“new” in India: no matter whether the knowledge of the thing has
really passed into the real life of the people or has merely remained
pigeon-holed on paper, out of mind. So far is this so that it has
even been suggested that any invention of which a description is
contained in any one of the thousands of the English Specifications
of English Patents of which a copy is filed at the Indian Patent Office
in Calcutta, must in law be regarded, by reason of its publication in
such a paper, as public knowledge in India: and that this will be so
even though it were positively showm that no one in India had in fact
ever read the particular paper.
It would not, it seems, be a difficult matter to make provision in
the Indian Patent Law to the effect that nothing should be deemed to
amount to publication such as to constitute public knowledge in India
'merely by reason of the fact of its being contained in a British
Specification filed in the Patent Office in Calcutta. This would in all
probability at once open up a wide field for manufacturing enterprise ;
since it would probably allow the manufacture in India with the
protection of an Indian Patent of many things w r hich would be for
all practical purposes new to India, but for which at present no Indian
Patent may be granted.
If desired the advisability of additional legislation further in the
same direction might be considered, to enable an Indian Patent to be
granted and the consequent protection thereby to be afforded, on terms,
for the manufacture in India of things, or under processes, which were
new in this sense, that while theoretical knowledge on paper existed
F
xlii THE LAW OF PATENTS IN INDIA
in India concerning them, there had not been any manufacture of these
things or under these processes previously at all in India. At the
present time, of course as is well established, such things are not held
to be “new” in India within the meaning of Patent Law; and conse-
quently no Indian Patents may be granted for such things or processes.
These are however matters strictly outside the scope of a law-
book. They concern rather those whose business it may be to make
the law of the future than those who are only interested to interpret
or administer the law as it stands to-day.
Matters of even greater insistence and of practical importance
concern the pressing problems of Federation.
As remarked in a later passage in this book (sec p. 205) the
name "Indian Patent Office” for the Patent Office situated at No. 1
Council House Street in Calcutta is at present to some extent a
misnomer. For its powers and functions extend only throughout
British India : and not at all in the large area of India which is covered
by the Indian States. Under the new constitution of a Federation of
India it may be that the Patent Office, styled even now the Indian
Patent Office, will, like other similar institutions, come more closely
to fulfil the qualities of its name: functioning as the Indian Patent
Office in the sense of being the Patent Office of the Federation of
India.
Hitherto, it is to be observed, an Indian Patent has created a
monopoly which runs only throughout British India. In British India,
as part of the territory over which an Indian Patent was hitherto
effective, was included Burma, the Shan States and Aden. An Indian
Patent has had up to the present no effect in any of the large portions
of India which comprise the Indian States.
In future, as Burma is to be separated from. British India, the
monopoly created by the grant of an Indian Patent will after the
separation becomes effective cease to be of any effect in Burma: The
territory of the Shan States will presumably also automatically be
excluded from British India with the separation of Burma. Aden
also, which under the Government of India Act, 1935 (Section 288)
is to cease to be a part of British India, will consequently also become
territory over which an Indian Patent will cease to run,
INTRODUCTION xliit
It has been stated' that it is the intention of the Burmese Govern-
ment to pass legislation setting up a system of ; Burmese Patents which
will have effect throughout Burma only:just as is the case already in
Ceylon. Aden, presumably, will also legislate for a new Patent system
of its own, if this is desired.
The effect in Burma and Aden of Indian Patents granted prior to
the separation may have to be settled and determined.
Further and even greater alterations than these in the extent of
the territory over which an Indian Patent will run in future may well
result, if there is a Federation of India, from the consequences and
incidents of Federation.
Hitherto certain Indian States, such as Baroda, Cochin,
Hyderabad Deccan, Indore, Kashmir, Marwar, Mysore and Travancore,
have had independent Patent Systems of their own. Other Indian States
have had none. Under the Government of India Act, 1935 ( Sections 100
& 104 and the Seventh Schedule, Arts. 27 & 34) it is provided that
"copyright, inventions, trademarks and merchandise marks” also the
“development of industries, where development under Federal Control
is declared by Federal law to be expedient in the public interest” are
to be subjects in the Federal Legislative List. It is thus expressly
provided that for Patents for inventions the Federal Legislature is to
have, and the Provincial Legislatures are not to have, power to make
laws.
The result of this may well be therefore that in future, after
Federation, a grant of an Indian Patent will be effective throughout
the whole territory which will constitute Federated India; including
as well as British India, the Indian States which will have joined the
Federation.
On the other hand it is still quite open for special stipulations to
be agreed between individual States and the central Government con-
cerning the system to be worked for the administration of Patents.
This is one of those matters which will call for discussion in connection
with the settling of the Instrument of Accession of every individual
State. There seems nothing to prevent arrangements being made
under such an Instrument of Accession which might result in any
individual State retaining its independent Patent system or its right
to set up such an independent system in the future. In which ca$?
Jtliv THE LAW OF PATENTS IN INDIA
the territory of such a State would continue, as now, to remain outside
the territory over which the grant of an Indian Patent would be
effective.
Other questions which may require to be settled in the individual
Instruments of Accession (if an Indian Patent is to be effective
as a monopoly throughout any of the Indian States) will be
how the receipts from the renewal fees paid by Patentees and other
income from the Patent system, hitherto received by the Government of
India, are to be proportioned between British India and those States
over whose territory the Indian Patent runs. Also, similarly, how
the costs of administration of the Patent system over Federated India
are proportionately to be borne. And what alterations, if any, may
require to be made of a legal, executive or financial nature in the
arrangements for the administration of the Patent system after
Federation.
Time will show whether after Federation an Indian Patent is to
carry a monopoly having effect in all or any of the federalised states
of India.
CHA PT ER I
CORRIGENDA AND ADDENDA.
Page 8, line 21, for “King's Bench Division” substitute “Court of King's Bench”.
„ 15, footnote, delete the word “infra”.
„ 23, line 10, for “EDWARD VIII” substitute “George VI”.
„ 33, line 24, for “effected” read “effective”.
„ 112, line 15, for “requisites” read “requisites”.
„ 137, 6th line from end of page, after “product in” insert “question”.
„ 142, to footnte 31, add :
“See the recent case of In the Matter of Applications for Patent by
Rau G.m.b.H., (1935 ) 52 R.P.C. 362.”
„ 143, footnote, for “(1929)” read “(1923)”.
„ 169, line 7, for “patient” read “patent”.
„ 171, footnote, for “Morling” read “Marling”.
„ 177, footnote, for “Eange” read “Range”.
„ 183, line 4, after “If this” insert “be”.
„ 187, line 9, for “33” read “38”.
„ 223, 4th line from end of page, for “26(1) (e)” read “26(1) (a)”.
„ 255, 7th line from end of page, delete the inverted comma before “It may be
observed”.
„ 266, 4th line from end of page for “24(1) (f)” read “26(1) (f)”.
„ 433, line 1, for “468” read “368”.
„ 454, line 4, delete the number “23” and insert this number “23” in line 29, after
the words “to present the petition”.
„ 556, line 27, for “(1890) 7 R.P.C.” read “(1900) 17 R.P.C.”.
„ 579, 6th line, from end of page, for “533” read “553”.
„ 606, footnote No. 25, for “21 R.P.C. 192” read “12 R.P.C. 192”.
„ 620, line 5, for “Youny” read “Young”.
„ 652, footnote No. 16, for “Dainler” read “Daimler”.
„ 776, line 18, for “81” read “31”.
„ 776, 6th line from end of page, for “84” read “34”.
„ 788, footnote 4, for “Dulgeon” read “Dudgeon”.
„ 927, 6th line from end of page, for “1933” read “1932”.
„ 1141, line 11, for "certiorari' read “certiorari” and then insert “790-804”.
„ 1141, line 25, after “prohibition” insert ", 790-804”.
„ 1152, line 33, after “as to,” insert “454,”.
„ 1156, line 20, after “in infringement suit” insert “454, 647, 733.”.
THE LAW OF PATENTS IN INDIA
1
CHAPTER I.
HISTORY AND NATURE OF PATENT RIGHTS
OBTAINABLE IN BRITISH INDIA.
Position in law of a man in' possession of a bare invention with-
out grant of Patent. Under English Law.
Apart from such rights, if any, as may be bestowed on him by
direct individual grant from the Crown, no man has of his own
right any private property under English Law in any, even his own,
invention. In this respeot the product of a man’s mind wbioh takes
the form of an invention which may or may not become the subject
of Letters Patent differs from the product of a man’s mind which
takes the form of a book ; since an author as soon as his book is
created has private property in the copyright of his book at Common
Law apart from any grant . 1 An inventor, no matter to what extent
he may have perfected the creation of his invention, has no
right in the invention unless he can go one step further and obtain
the grant of Letters Patent. It is of course legal in every
respect for an inventor to keep his invention to himself and work
it in secret. But, if he does so, he does so at his peril ; and if
it is discovered, he has no right to prevent or object to the dis-
coverer, or all the world, making it or using it or selling it, just
as if he himself had never invented it.
It is unnecessary, if not inacourate, to say that he does so “at
the peril of losing his rights in the invention if it is discovered” ;
since, as mentioned above, he has no rights to lose.
Having no rights himself against the rest of the world in his
invention, it follows also that he cannot under English Law effec-
tively assign any rights in his invention to another party.
■- — — tjfe- — — - — — — — — — -
1 Aa to distinctions between Patent Right* and other exclusive rights see
;'ttri thei stCh.II. ... ;p.;, ■ ' - . . . ; . '
2 THE LAW OF PATENTS IN INDIA
Of course where A is an inventor of a secret invention which
he does not himself wish to patent or exploit, there is nothing to
prevent A entering into a valid contract with B, under which A, in
consideration of money or other reward paid to him by B, imparts
the secret to B and agrees that he, A, will not impart the secret to
others; and that he, A, will not take out any Patent in his own
name but will assist B in any necessary way to obtain the requisite
patent ; and if necessary will allow an application to be made for
a Patent in the joint names of A (who, being the true and first
inventor, is therefore the proper applicant for any such patent) and
B. But in such case there has been no assignment of any rights
properly speaking in the invention as against others at all to B.
Just as A had no rights against the world in the invention until the
acquisition of such rights as might be bestowed on him by grant of
Letters Patent, so B is in no better legal position than A was in,
in the first place. And in truth B as against the world in general
is in no better legal position himself after the transaction than he
was in before the transaction. B has of course certain personal
rights under the contract against A : but no more. Such a transac-
tion, in which an inventor A, may give up such rights as he may
have, qua inventor, to apply for a grant of Letters Patent, to B, may
popularly be spoken of as “an assignment by A of his invention to
B but it is important to note that there is no assignment in the
sense of an assignment of any rights of property or of any rights
which will stand against the world in general ; since the inventor
has no such rights without express grant.
It is necessary to emphasise at the outest this legal position
at Common Law of an inventon before grant of Letters Patent in
order to obtain a proper perspective of the foundations of English
Patent Law upon which in its turn all Indian Patent Law is based.
Origin and meaning of the word “Patent”
The word Patent (derived from the Latin patere to be open)
merely signifies an open record of the grant made by the Crown :
open that is for all the world, on proper application, to eee. The
origin and meaning of Letters Patent or “litter® patentee” is refer-
red to by Sir William Biackstone in his treatment of “the Rights of
Things” in the following passage
“The King’s Grants are also matter of public record.
ite I) DEVELOPMENT OF PATENT LAW IN ENGLAND A
These grants, whether of lands, honours, liberties; franchises, or
aught besides, are contained in charters, or letters patent, that is,
open letters, litterce patentee : so called because they are not sealed
up, but exposed to open view, with the great seal pendant at the
bottom ; and are usually directed or addressed by the King to all
his subjects at large. And therein they differ from certain other
letters of the king, sealed also with his great seal, but directed to
particular persons, and for particular purposes : which therefore,
not being proper for public inspection, are closed up and sealed on
the outside, and are thereupon called writs close, Iitterm clausro, and
are recorded in the close-rolls, in the same manner as the others are
in the patent-rolls.” 2
Letters Patent or Patents are thus merely the name given to a
document in which the Crown confers special rights or privileges
upon a subject. Patents or Letters Patent are requisite for the graut
of a peerage : or for the conferment of titles of honour : or for a
change of name : or for the appointment of Judges and certain
other officials such as Ministers of the Crown : or for the grant of
certain special privileges or of certain charters of incorporation to
certain public bodies : to mention only some of many various pur-
poses which have nothing whatever to do with what is ordinarily
known as Patent Law or with inventions. In this book and with
reference to Patent Law the use of the word “Patent” means merely
the Letters Patent by which (broadly speaking) a grant is made to a
person known as the Patentee of the monopoly for a fixed period to
manufacture and/or sell goods made in accordance with a certain
specified invention.
The Development of Patent Law in England.
Monopolies at Common Law.
The Crown has always possessed, as an inherent part of the
royal prerogative, the sole right to grant monopolies. It is difficult
or impossible to determine with certainty when monopolies were
first granted to inventors, although the exercise of the prerogative
in this way is undoubtedly very ancient. As an example of an early
grant it is stated that King Edward III, in the year 1366 A. D. on
the representation of some alchemists, granted a commission to two
friars and two aldermen to inquire whether a philosopher’s stone
* Blackstone's Commentaries (16th Edn. 1825) VoL 2, page 346.
v ' THE LAW OF PATSStStiS IN INDIA :: ;
might be made ; add, on their reporting that the' project was feasible,
granted to the two aldermen a patent, of privilege, that they and
their assignees should have the sole making of the philosopher's
stone.* The earliest form of these grants of privilege seems to
have been that of exclusively conducting new trades or dealing in
objects of commerce hitherto unknown.
The adjustment between the Crown’s right of Prerogative and
> the rights and liberty of the subject.
* At first there were no defined limits as to the extent to which
the Crown might grant suoh monopolies. As the exercise of the
prerogative was a source of revenue to the Crown and a means of
raising money which could be employed without discussion id
Parliament by a single stroke of the pen at the pleasure of the
Sovereign, it is natural that at some periods there was a tendency
on the part of the Sovereign or the courtiers of the Sovereign to
extend the use of the' prerogative.
In the nature of things, if the Crown were to make grants of
monopolies without limit, such grant would inevitably interfere with
the personal rights and liberty of other persons who might be com-
petitors in business of the grantee or prospective purchasers.
There seems little doubt that in some instances the Crown
sanctioned the most oppressive monopolies with a view to reward
favourites or to raise money.
The position of matters by the time of the reign of Queen
Elisabeth is referred to by Edmunds as having been described by
Hume as follows : —
“It is astonishing to consider the number and importance of
those commodities which were thus assigned over to patentees.
Currants, salt, iron, powder, cards, oalf-skin, pouldavies, ox nhin
bones, train oil, lists of cloth, potashes, aniseeds, vinegar, sea oOals,
steel, aqua vitee, brushes, pots, bottles, saltpetre, lead, acoidenoes
oil, calamme stone, oil of blubber, glasses, paper, starch, tin, sulphur,
new drapery, dried pilchards, transportation of iron ordnance, of
beer, of horn, of leather • importation of Spanish wool, of Irish
yarn. These are but a part of the commodities which had been
appropriated to monopolists. When this list was read in the House,
* See Edmunds (1890 Edo.) p. 3 citing Year Book Part IV 40 EDW HIM.
17, 18snd Hindmarch p. 4.
f-Cfc‘lJ ; • V;--'
a member cried. ‘Isnot bread in the number ?* Bread’, said every -
one with astonishment. ‘Yob ; I assure you,’ replied he, ‘if affairs :
go on at this rate, we shall have bread reduced to a monopoly before
next Parliament’. These monopolists were so exorbitant in their
demands that in some places they raised the price of salt from six*
teen peace a bushel to fourteen or fifteen shillings. Such high pro*
fits naturally begat intruders upon their commerce, and in order- to
secure themselves against encroachments, the patentees were armed
with high and arbitrary powers by the Council, by which they were
enabled to oppress the people at pleasure, and to exact money from
such as they thought proper to accuse of interfering with their
patent. The patentees of saltpetre, having the power of ' entering
every house and of committing what havoc they pleased in stables,
cellars, or wheresoever they suspected saltpetre might be gathered,
commonly extorted money from those who desired to free themselves
from this damage or trouble, and while all domestic intercourse was
thus restrained, lest any scope should remain for industry, almost
every species of foreign commerce was confined to exclusive com-
panies, who bought and sold at any price they themselves thought
proper to offer or exact.” 4
It is true that the view has been stated, notably by Prof. S. R.
Gardiner in his History of England from 1603-1642, that many of
the monopolies and grants that were complained of at the time about
which he is writing, that is under James I, were quite defensible in
principle and that the grant of them by the Crown was entirely
fitting and proper ; and that it was not the granting of them which
was the cause of the grievances of the people but the abuse of privi-
- leges by the grantees. No doubt it must have been very difficult if
not impossible for the public to obtain any redress against the
grantees in cases of oppression owing to the laok of any effective
system of regulation of the use and working of the monopolies after
grant. In any case whether it was that the monopolies were grant*
ed in a manner in which they should not have been granted, op
whether it was principally that the monopolies were used by the
grantees without check oppressively, these monopolies became a
source of grievance to the people ; and a series of attacks was
made upon them.
Shortly previous to the year 1601 these grievances aroused the
'*■ Edmunds (1800 Edn.) p. 5 oitlng 5 Hume 386,
* THE LAW OF PATENTS IN INDIA f Ch. !
attention of the House of Commons and a petition was presented to
Queen Elizabeth complaining of the monopolies. This petition
being ineffective a Bill was introduced in the House of Commons for
the purpose of abolishing all the Obnoxious grants. .
A dear idea of the views then held concerning the two oppo-
sing principles, of the unimpeachable royal prerogative on the one
hand, and of the liberty of the subject on the other, may be well
had in Hume’s own words which are cited by Edmunds in stating a
view of the proceedings which took place on the introduction of the
Bill. He says : —
“As the former application had been unsuccessful a law was
insisted on as the only expedient for correcting these abuses. The
courtiers, on the other hand, maintained that this matter regarded
the prerogative, and that the Commons could never hopo for suc-
cess if they did not make application in the most humble and respect-
ful manner to the Queen’s goodness and beneficence It was
asserted that the. Queen inherited both an enlarging and restraining
power : by her prerogative she might restrain what was otherwise
at liberty : that the royal prerogative was not to be canvassed, nor
disputed, nor examined, and did not even admit of any limitation :
that absolute princes, such as the Sovereigns of England, were a
species of Divinity : that it was in vain to attempt tying the Queen’s
bands by laws or statutes, since by means of her dispensing power
she could loosen herself at pleasure ; and that even if a clause
should be annexed to a statute excluding her dispensing power she
could first dispense with that clause ; and then with the statute.
After all this discourse, more worthy of a Turkish divan than of an
English House of Commons the Queen, who perceived how
odious monopolies had beoome, sent for the Speaker, and advised
him to acquaint the House that she would immediately cancel the
most grievous of these patents”.
Thereupon an address of thanks was at once voted and was deli-
vered to Her Majesty by the Speaker attended by about 180 mem-
bers on 30th November 1601. The answer sent by Queen Elizabeth
to this address is of interest as showing the Crown’s view of these
matters at the time and its regard for the rights and liberty of the
subjeot and its appreciation of the proper limits of its prerogative.
The following extract may be quoted : —
"I never put my pen to any grant, but upon pretence and
0,1} REVOCATION OF MONOPOLIES 1
semblance made unto me, that it was both good and beneficial to the
subjects in general, though a private profit to some of my ancient
servants who had deserved well : but the contrary being found by
experience, I am exceedingly beholden to such subjects as would
move the same at first That the grants should be grievous to
the people, and oppressions, etc., be privileged under colour of our
patents, our kingly dignity shall not suffer it : and when I heard of
it I could give no rest to the thoughs till I had reformed it”. 5
As a result of these events the greater number of the mono-
polies complained of were revoked under Queen Elizabeth.
After the accession of James I the same trouble began over
again owing to fresh grants of further monopolies by the King.
The King in 1608 by letters patent created a monopoly in res-
pect of the whole trade of alum in England and took the whole trade
into his hands *, other monopolies were also granted. A flagrant
instance is the case of Mompesson and Mitchell, being Sir Giles
Mompesson and Sir Francis Mitchell, to whom a patent was granted
for the sole making and selling of gold and silver lace. An account
of the affair which may be taken from the Parliamentary Report 1829
page 167, cited in Edmunds, is to the following effect s— ' The
patentees grossly abused their privilege, “making sophisticated lace
of copper and base materials, and procuring others (who made good
lace) to be fined and imprisoned for infringing their patent. Great
complaints were made to Parliament ; and in consequence Mitchell
was imprisoned, but Mompesson escaped, and a proclamation waB
issued, offering a reward for his apprehension. The King informed
the Parliament that he was ignorant of the abuse of his patent and
would rovoke it. The Lords confiscated the estate of Mompesson
who had escaped, and degraded him of his knighthood. Mitchell was
also degraded, fined £1,000, carried through the streets of London on
a horse, with his face to the tail, and imprisoned for life. The
patent for gold and silver lace and some others were revoked by
Royal proclamation”.
As a result of such fresh grants by the King the whole question
came up again. It was during the reign of James I in this contro-
versy that precise limits came to be settled concerning what mono-
polies might properly and lawfully be granted and what might not.
* See Edmunds (1890 Edo.) p. 6 citing Hume ubi supra.
Sf:
THE LAW 0FPATENT6 # INDIA
I;
Thegeneral principles of these limits are aptly defined in Coke's
definition of an unlawful monopoly.
Coke’s definition ol an illegal monopoly. ; «
An illegal monopoly, according to Sir Edward Coke, is an
institution or allowance from the King by his grant, commission, or
otherwise, to any person or persons, bodies politic or oawj* of
or ior the sole buying or selling, making, working, or using of any
thing whereby any person or persons, bodies politm or wrpor^
are sought to be restrained of any freedom or liberty that they ha
before or hindered in their lawful trade".®
Similar principles were evolved, fixed and given the authority
of law iu certain well known cases concerning monopolies which
during the course of the same controversy under James I came be-
fore the Courts for decision. The first leading oase was the case of
Darcy v. Allein.
Darcy versus Allein.
In the year 1602 the disputes above referred to came before
the Courts in the case of Darcy®. Allein known as the case of
Monopolies", which was heard and argued in the last year of the
reign of Queen Elisabeth and in which judgment was delivered in
the first year of James I. The case was decided in the King s Bench
Division. 7
The Plaintiff in this case was one Edward Darcy a groom of the
Privy Chamber to Queen Elisabeth; and the Defendant one T.
Allein, haberdasher of London. The Plaintiffs, case was t k ha the
Plaintiff had been granted the monopoly by Letters Patent
years (subsequent to the grant for a previous period of 12 ye«sto
another) for the sole manufacture and sale in the realm o 10*1
Britain of playing cards; and that the Defendant had infringed his
monopoly by manufacture and sale. The Plaintiff declared that
Queen Elisabeth intending that her subjects being able men to exer-
cise husbandry, should apply themselves thereunto, and that they
should not employ themselves in making playing oards, which
hot been any ancient manual occupation withm the realm, and that
by making such a multitude of playin g cards card-playing WW>
• gee Edmunds (1890 Edn.) p. IQ, citing Coke 3 Inst
: > Darcy V. Allein, (TWn : 44 Elis :) The case of Monopolies,77.E. a-
L e. II. Oo. Eep 25.
1260,
til. I] DABOY V. ALLEIN 0
beoome more frequent and especially among servants and appren-
tices and poor artificers; and to the end that her subjects might
apply themselves to more lawful and necessary trades ; by her letters
patent under the Great Seal the said Queen granted the
Plaintiff his Executors and Administrators and their deputies eto.
the same privileges authorities and other the said premises (as had
been granted to the previous grantee : i.e. a monopoly of manufac-
ture, importation and sale) for 12 years after the end of the
former term. That the Plaintiff caused to be made 400 grosses of
cards for the necessary uses of the subjects to be sold within the
realm and had expended in making them £5,000/-. That the Defen-
dant knowing the said grant and prohibition in the Plaintiff’s letters
patent without the Queen’s license, or the Plaintiff’s, at
Westminister caused to be made 80 grosses of playing cards and
100 other grosses
The defence of the Defendant was in effect a denial of the acts
complained of except as to one half gross and as to that he pleaded
"that he was entitled to sell the cards” by reason of a custom in
favour of the Society of Haberdashers in the City of London. After
the disposal of a point on demurrer, which is not material for present
purposes, the case was heard and decided on the merits ; and it must
be taken as if the defence pleaded was, in modern parlance, a plea
among other points, that the patent was invalid. Among the issues
raised in the case were the following : —
(i) If the said grant to the Plaintiff of the sole making of cards
within the realm was good or bad ?
(ii) If the license or dispensation to have the sole importation
of foreign cards granted to the Plaintiff was available or not in law ?
As to the second issue, there appears to be some authority, in
spite of the wording of Coke’s report, for the view that actually the
second issue was not fully adjudicated upon by the Court :* in any
event that issue turned partly on a construction of a particular
statute (3. E. 4. Chap. 4.) which imposed a forfeiture upon the
importation of playing cards, which is not for present purposes
material. In these circumstances the importance of the case at the
present day is confined to the discussion of and decision on the first
issue, to which the following comments are, therefore, confined.
* Seo the note in the English Reports at p. 1265.
2
J 10 THE LAW OP PATENTS lit INDIA* ' \ "
,;■•• For the Plaintiff it was argued as to this issue “that the said
. grant of the sole making of playing cards within the realm was. good
for three reasons : — (1) Because the said playing cards were not any
merchandise, or thing concerning trade of any necessary use, but
things of vanity, and the occasion of loss of time, and decrease of
' the substance of many, the loss of the service and work of servants,
causes of want which is the mother of woe and destruction, and
therefore it belongs to the Queen to take away the great
abuse, and to take order for the moderate and convenient use of
them, (2) In matter of recreation and pleasure, the Queen has a
prerogative given . her by the law to take such order for such mode-
rate use of them as seem good to her. (3) The Queen in regard of
the ; great abuse of them, and of the cheat put upon her subjeots by
reason of them, might utterly suppress them, and by consequence .
without injury done to any one, might moderate and tolerate them at
her pleasure. And the reason of the law which gives the King
' these prerogatives in matters of recreation and pleasure was because
the greatest part of mankind are inclinable to exceed in them”.
And reliance was placed on various cases and statutes.
For the Defendant it was argued that the grant was void.
The judgment of the court was delivered by the Lord Chief
JdBtioe of England (Popham. C. J.) in favour of the Defendants. The
effect of the judgment may be summarised, retaining as far as
possible the original phraseology of boke’s report, as follows : —
“That the said grant to the Plaintiff of the sole making of cards
Within the realm was utterly void and that for two reasons : —
(1) That it is a monopoly and against the common law : for four
reasons :
(i) All trades, as well mechanical as others, which prevent
idleness (the bane of the commonwealth) and exercise men and youth
in labour, for the maintenance of themselves and their families and
for the increases of their substance, to serve the Queen when occa-
sion shall require, are profitable for the commonwealth, and therefore
the grant to the Plaintiff to have the sole making; of them is against
. the common law, and the benefit and liberty of the subjects.........
(ii) The sole trade of any mechanical artifice or any other mono-
. poly, Is not only a damage and prejudice to those who exercise the
same trade, but also to all other subjects for the end of ail these
<C i ] JUDGMENT OP POPHAM, G. J. ' :
monopolies ig for the private gain of the patentees ; and although
provisions and oautions are added to moderate them, yet...... it is
mere folly to think that there is any measure in mischief or wicked*
ness : ("res profecto stulta est nequitias modus?’). That therefore
there are three irreparable (evil) incidents to every monopoly against
the commonwealth : (vix. (a) rise of price (6) fall of quality,
(e) unemployment). That the King's grant which tends to the charge
or prejudice of the subject is void
(iii) The Queen was deceived in her grant ; for the Queen, as by
the preamble appears, intended it to be for the public weal, and it
will be employed for the private gain of the patentee and for the
prejudice of the weal public. Moreover the Queen meant that the.
abuse should be taken away, which shall never be by this patent,
but rather the abuse will be increased for the private benefit of the
patentee, and therefore this grant is void Jure Regio.
(iv) This grant is primes impressionis, for no such was ever
seen to pass by letters patent under the great seal before these days
and therefore it is a dangerous innovation And it is observed
that this grant to the Plaintiff was for twelve years so that his
executors administrators wife or children or others inexpert in the
art and trade will have this monopoly. And it cannot be intended
that Edward Darcy, an Esquire, and a groom of the Queen's Privy
Chamber, has any skill in this mechanical trade of making cards ;
and then it was said that the patent to him was void, for to forbid
others to make cards who have the art and skill and to give him the
sole making of them who has no skill to make them will make the
patent utterly void It was also observed : “as to what has been
said that playing at oards is a vanity, it is true, if it is abused, but
the making of them is neither a vanity nor a pleasure but a labour.
and pains And it is evident by the preamble of the said Act
of 3. E. 4. c. 4, that the importation of foreign cards was prohibited
at the grievous complaint of the poor artificer card-makers, who were
not. able to live of their trade if foreign oards should be imported;..
......And therefore it was resolved that the Queen could not suppress
the making of cards (forasmuch as it maintained divers families by
their labour and industry) no more than the making of dice,
bowls, balls, hawks hoods, bells, lures, dog couples, and other the
like, which are works of labour and art, although they serve for
pleasure, reoreation and pastime, and cannot be suppressed but by
12 THE LAW OF PATENTS IN INDIA [ Ch. I
Parliament, nor a man restrained from exercising any trade but for
Parliament”.
(2) That it is against divers Acts of Parliament “such
charter of a monopoly against the freedom of trade and traffic (being)
against divers Acts of Parliament : (9. E. 3- c. 1 & 2. 25. E. 8. c. 2
being oited). And it is farther (by the same act) provided that if
any statute, charter, letters patent, proclamation, command, nsage,
allowance or judgment be to the contrary, that it shall be utterly
void, Vide Magna Charta Cap 18 : 27 E. 3. Cap 11 etc”.
Thus the Judges exercising their traditional independence, held
that the Crown could not have intended in that case to grant a
monopoly which would be to the prejudice of the Crown’s subjects
and accordingly held that the grant of the monopoly in question was
void at law. The decision in this case established finally the illega-
lity in law of monopolies for trades or manufactures which were not
new , and pointed the way for the Statute of Monopolies and laid the
foundations of the basic principles on which modern Patent Law is
based.
The King’s Book.
The next step in the history of the dispute was marked by the
declaration of James I, made in 1610 in a book published by the
King himself, by which it was notified that monopolies in general
were bad, and, in the language of the time “things contrary to our
laws and things for which we expressly command that no suitor
presume to move us an exception however being expressly made of
the following : — “Projects of new invention so they be not contrary
to the Law, nor mischievous to the State by raising prices of commo-
dities at home or hurt of trade or otherwise inconvenient”.
It may be noted that Coke suggests definitely that the publishing
of the King’s book was a direct result of the judgment in Darcy v.
Allein. 9 The result of the declaration was in effect to declare that
all monopolies were bad except those to be granted to inventors.
Even after 1610 however it appears that grants of monopolies,
such as were complained of, were continued to be made.
Finally in 1624 advantage being taken of the good feeling then
existing between James I and his Parliament and of the declaration
to which he had committed himself in 1610, the famous enactment
' See Edmunds (1890) page 629 citing Coke 3 Inst. 182,
Ch. I ]
THE STATUTE OF MONOPOLIES
13
was passed in Parliament known as the Statute of Monopolies
(21 Jac. If Cb. 3) which gave effect to the declaration already men-
tioned.
The Statute of Monopolies.
It is important to understand that the Statute of Monopolies did
not create any Monopolies which were not good at Common Law
before ; nor did it abolish any Monopolies, it seems correct on the
whole to say, which at Common Law alone would have been or ought
to have been sanctioned before. Long before the Statute of Mono-
polies it had been a principle of the Common Law that the Crown
had a right to grant monopolies in certain cases though it had no
right to grant monopolies in other cases : as where their grant would
be mischievous to the State. Accordingly the Statute of Monopolies
was passed in the form of a codifying Statute declaratory of the
state of the Law then existing and saving the rights of the Crown
then existing : and not as a Statute which was creating any new state
of Law or any new rights.
The Statute did however make alterations of a practical nature
in certain other directions : in particular by enacting that thereafter
all disputes regarding monopolies should be triable according to the
Common Law and in the Common Law Courts.
Prior to the passing of that Statute all disputes between the
Crown and its subjects regarding monopolies were heard and decided
before the Star Chamber. From the circumstances in which that
judicial body had been created in the time of Henry VII in 1487
through his Statute (3 Hen 7 Ch. 1) and in which it had functioned
until it was abolished by Charles I in 1640 by his Statute (16£!ar. 1.
Ch. 10) the Star Chamber, which was in effect an instrument of the
Crown, being its creation and subservient to the Crown for its exis-
tence, had not proved a satisfactory court for the ordinary people. It
was largely because of this that many bad monopolies had been en-
forced and that the gross abuses in regard to them had become
common.
As rightly remarked by the Commentator in Halsbury's Laws of
England, the political situation of those times is now of more than
passing interest to anyone making a study of Patent Law to-day ;
since the whole modern structure of Patent Law in England, which
has been taken as a model in many other parts of the world, springs
14
THE LAW OF PATENTS IN INDIA
[ Ch. I
from the famous Section 6 of the Statute of Monopolies which in its
turn was the outcome of the political strains and stresses of the
period preceding it ; and furthermore the interpretations which the
Courts came to put on that section were largely due to the lively
existence at the time of Sir Edward Coke ; not only on account of
the strength of his intellect and the forcefulness with which he
pressed his views but also on account of the chance which caused
those views to carry a considerable bias. In this matter he was a
violent partisan. The result is that in his writings he seeks to
narrow the meaning of a valid monopoly beyond the limits given to
it on the face of that Section 6. The result is that certain of his
propositions are no longer law and several of the difficulties and
anomalies of modern English Patent Law formerly arose from the
dilemma in which the Courts had been placed of rejecting such a
famous authority or of accepting propositions which have no other
support in law. 10 It is not necessary however here to pursue such
matters in further detail. It is of primary importance to consider
the terms of the section itself and the broad nature of the mono*
polies which it authorised. From this it will be seen that the requi-
sites postulated in the Statute of Monopolies for the grant of a valid
Patent may be in the main summarised as follows : —
(1) The grantee was required to be the true and first inventor.
(2) Novelty was a requisite for the manufacture for which the
monopoly was to be given.
(3) The manufacture was not to be contrary to law ; nor mis-
chievous to the State by raising the price of commodities at home ;
nor hurtful to trade ; nor generally inconvenient.
The full text of this 6th Section is as follows : —
"Provided also, and be it declared and enacted, that any Decla-
ration before mentioned shall not extend to any Letters Patents and
Grants of Privilege for the Term of Fourteen Years or under, here-
after to be made, of the sole working or making of any manner of
new Manufactures within this Realm, to the true and first Inventor
and Inventors of such Manufactures, which others at the time of
making such Letters Patents and Grants shall not use so as also
they be not contrary to the Law, nor mischievous to the State, by
*• See Halsbury Vol. 22 Art. 269 and Note K and the case there cited Boul-
ton v, Bull (1795.) 2 Hy. Bl. 463 at p. 491,
Oh. I] STRUCTURE OP MODERN PATENT LAW . 16
raising Prices of Commodities at home, or Hart of Trade, or gene*
rally inconvenient ; the said Fourteen Years to be accounted from
the Date of the first Letters Patents, or Grant of suoh Privilege
hereafter to be made, but that the same shall be of suoh Force as
they should be, if this Act had never been made, and of none other.” 11
The part of the Statute with which we are now concerned was
thus in the form of a statement of the exceptions to the general
proposition that monopolies in general were bad and of no legal
effect. It is on the exceptions mentioned in the Statute of Mono-
polies that the whole structure of modern Patent Law has been
raised. The positive rights to create grants of Patents have been
all along those of the Crown at Common Law. These rights were
the same in their nature before the Statute of Monopolies as after
it. They are the same in their nature to day. Since all subsequent
legislation has preserved those rights of the Crown which were
possessed by the Crown at Common Law and without creation by
any Statute, “in relation to the granting of Letters Patent or the
withholding of the grant thereof”. So it is in England, as is em-
phasised by the opening words of the form of English grant, 12 that
at the present day notwithstanding the various statutes which
have been passed in relation to Letters Patent for inventions,
these monopolies arc still granted upon the “mere motion” of the
Sovereign in the exercise of his royal prerogative and that all that
has been done has been declaratory of the limits within which that
prerogative should be exercised, and of the method of procedure
to bo adopted in obtaining Letters Patent for inventions.
So it is that the subsequent English Statutes passed after the
Statute of Monopolies have adopted largely the definitions contained -
in that Statute. Another reason for this being, as has been cogently
suggested, that the Legislature in adopting the old and not altoge-
ther perfect definition has been influenced to some extent by the
great number of important cases which have been decided on the
construction of section 6 of the Statute of Monopolies and by consi-
deration of the enormous expense and labour and learning which
have been devoted to obtaining those decisions and by the realization
that those decisions had thus obtained a definite judicial meaning.
11 For the full text of the Statute reference may be made to Appendix No. 1
infra below where for convenience it is set out at length.
*• See Oh. 2 infra.
16 THE LAW OP PATENTS IN INDIA [Ch. 1
Modern Statutory Law of Patents in England.
It is unnecessary here in detail to consider the various Sta-
tutes which have been passed since the Statute of Monopolies, since
these have now all been consolidated in England in one Statute of
1932 (being 22 and 23 Geo. 5 Ch. 32), which came into force on 1st
November 1932. The amendments made by the Act of 1932 in the
Statute of 1907 (referred to in the amending Act as the principal
Act) and the complete text of the principal Act as amended by the
previous Acts of 1914, 1919 and 1928 are now'cited officially as one
complete act known as the Patents and Designs Acts 1907 to 1932.
The full text of tliat complete act is set out for convenience of
reference in an Appendix. 13
It is this Act which now embodies the whole Statutory Patent
Law in England.
The Development of Patent Law in British India.
Turning now to the development of Patent Law in British
India, it will be at once seen that all Indian Patents are creations
solely of the Statutory enactments of the Indian Legislature ; which
may be regarded as being in the same sphere as similar English
statutes, as laying down the manner and procedure in which the
prerogative right of the Crown to grant monopolies for inventions
will be exercised in British India. Constitutionally the power to
grant the monopolies still springs from and rests in the prerogative
power of H. M. the King Emperor. By the grant of Letters Patent
in England the grantee is at the present day given patent rights
which extend over the United Kingdom of Great Britain & Northern
Ireland and the Isle of Man but no further. The right to grant
Patents being in the Crown at Common Law, it is difficult to under
stand why Patents could not be granted in England which would be
validly current in India. There appears to have been considerable
discussion on this point. As stated in the Indian Patent Office
Handbook there was a considerable agitation in India for several
years preceding 1856, and it was as a result of such agitation that
the Act of 1856 was eventually drawn up and passed. Prior to that
there was of course from a practical point of view no machinery for
the administration or enforcement of Patents in India. Whether or
not the. Crown might have validly granted Patents in England which
*• Appendix No. 3 infra.
Ch. I j DEVELOPMENT OF PATENT LAW IN INDIA Vt
would have been ourrent in Jndia is now immaterial. In the first
Indian Aot which was passed the Indian Legislators were careful to
state in the body of the Act that it was not to interfere with the
Boyal Prerogative : (See section 35 of Act VII of 1856 referred to
below). But actually no attempt has been made by the Crown either
to create or to enforce the grant of Patents in England so as to make
such grants to be current in India. For all practical purposes it is
now sufficient to note the very definite wording of the English grant
showing that the rights granted therein are local and are restricted
geographically as stated. 14
Summary of the old Indian Acts since repealed.
The first provision for anything in the nature of Patent Rights
in India was the Act of 1856 : being Act VI of 1856. 15 By that Act
it was intended that certain rights styled “Exclusive Privileges”
should be granted to inventors for a period of 14 years in India.
That Act was however introduced without the previous sanction of
H. M. the Queen. The Law Officers of Her Majesty advised that
the Indian Legislative Council was not competent to pass the Act.
The Court of Directors of the East India Company under their
powers disallowed the Act. The Act was accordingly formally
repealed in toto in 1857 (by Act IX of 1857). ltt Soon after that,
in 1859, another Act being Act XV of 1859 free from the formal
defects of the Act of 1857 was duly passed. Since this Act of 1859
may be regarded as the first real beginning of the creation of Patent
rights in India it is, though since repealed, set out in full for purposes
of reference in an Appendix. 17
On general lines the Act of 1859 followed the scheme of the
Act of 1856. There was no need however for any mention of the
Royal Prerogative, the royal sanction having been obtained.
By the Act of 1859 effective provision was made for the first
time for the grant of certain monopolies in India. This Act was
founded on the English Patent Law- of 1852 contained in the Statute
out below
14 For the form of grant of Letters Patent in England see Chapter II infra .
18 The nature of this Act may be seen from Appendix No. 4 below- where an
extract from Theobold's Legislative Acts is set out
10 The text of the short repealing
in Appendix No. 4.
17 See App. No. 4.
3
38 THE LAW OF PATENTS IN INDIA [Ch. I
16 & 17 Viet c 115. Under the Act of 1859 the monopolies werp
styled "exclusive privileges”. The general scheme under which these
might be obtained was this. The inventor of any new manufacture
might apply to the Governor General for leave to file a specification
thereof. Before dealing with such application the Governor-General
might refer it to any peraon or persons for enquiry and report.
The Governor General might then make an order authorising the
applicant to file a specification. After such order the inventor had
merely to file the specification within six months and he automati-
cally obtained the "exclusive privileges of making, selling and using
the invention in India and of authorising others to do so for the
term of 14 years from the time of filing such specification”. Five
copies of the specification were required to be filed, one of which in
every case had to be sent to and filed by the Secretary to Govern-
ment in Bengal, Fort St. George (Madras), Bombay, and North West
Provinces, respectively, and was to be open to public inspection
upon payment of a fee of one rupee. A record of all such applica-
tions and specifications and of all orders made was required to be
kept in the Office of the Secretary to the Government of India.
This book was to be open to inspection by the public on payment
of a fee of one rupee. And on payment of the expenses of copying,
a certified copy of any entry in the book might be obtained from the
Secretary to the Government of India. The Act gave a right to an
inventor to sue for infringement in the principal civil Court of
original jurisdiction within the local limits of whose jurisdiction the
cause of action should accrue or the defendant should reside as a
fixed inhabitant. The Act also gave rights to an opponent to apply
by motion to any of Her Majesty’s Courts of Judicature for a rule to
show cause why the Court should not declare that an exclusive pri-
vilege had not been acquired under the provisions of the Act on
certain grounds specifically mentioned in the Act. The Act also
gave a right of application to the Advocate-General of Bengal,
Madras or Bombay and to any person by order of the Governor
General to move the Court to investigate the question whether there
had been a breach of any special condition upon which the grant
| had been made or any other question of fact on which the revocation
of the exclusive privilege might depend (Section 26). The Act also
gave power to the GovernorGeneral to declare that the exclusive
privilege should cease if mischievous to the State or generally pre-
19
eh. I ] THE EARLIER ACTS IN INDIA
judicial to the public or for breach of any special condition upon
which it had been obtained : (Section 16). The Act also contained
many other detailed provisions. Reference may be made to the full
text of the Act as passed which is set out below in an Appendix. 18 .
The provisions of the Act of 1859 were in 1872 added to by
the further provisions of Act XIII of 1872 entitled “the Patterns
and Designs Protection Act 1872”. This Act was passed in the
form of an Act amending Act XV of 1859. AH its amendments
were amendments of addition. This Act of 1872 related solely to
Designs. It gave to any person entitled in the United Kingdom to
an exclusive right in any pattern or design similar rights in British
India. Since we are not in this work, which is confined to Patents for
inventions and does not deal with Designs, directly concerned with
it, further comment is' unnecessary. 19
The Act of 1859 was further supplemented in 1883 by Act 16 of
1883 entitled “the Protection of Inventions Act 1883”. This Act
was enacted as a direct preliminary to the International Exhibition
which was to be held in the years 1883 and 1884 at Calcutta for the
purpose of protecting inventors who might wish to exhibit their
inventions at the Exhibition, so that they would not be deprived of
the opportunity of obtaining monopolies for such inventions merely
through having exhibited them in public at the exhibition before
filing their Specification under the Act of 1859. The Act was drawn
in a form which might also in future afford similar protection in
regard to “any Exhibition to be held in India which the Governor-
General in Council might on the application of any persons desirous
of holding the Exhibition by notification in the Gazette of India
declare to be in the judgment of the Governor-General in Counoil,
calculated to promote Indian art or industry and to prove beneficial
to the mercantile agricultural or industrial classes of Her Majesty’s
subjects in India”.
In 1888 all three of the abovementioned Acts of 1859, 1872 and
1883 were superseded by Aot 5 of 1888 entitled “the Inventions and
Designs Act 1888.” This Act consolidated the previous law and also
effected considerable amendments : especially in regard to the prac-
tice to be followed in the various proceedings connected with the
1 * App. No. 4 infra.
11 App. No. 4 infra.
20 THE LAW OF PATENTS IN INDIA [Ch.I
application for and grant of exclusive privileges and their regula-
tion and control. The full text of the Act as passed, though it has
been since replaced, is set out for reference in an Appendix. 20
Modern Indian Acts, now current.
It was not until 19il that the system of Patent administration
which is now in force in British India was instituted. It was true
that in England in 1883, that is to say five years before the Indian
Act of 1888, the English Patent Law had been consolidated and a
system enforced by Legislation of a nature which was considerably
more advanced than the provisions made in the Indian Act of 1888.
At the time of the passing of the Act of 1888 it had been considered
that “the time was not ripe in India for introducing the English
practice in its entirety as the volume of Patent work in India was
then small” ; (see the reference to this in the Objects and Reasons of
the Indian Act of 191 1.) 21 But meanwhile the comprehensive
consolidating Statute of 1907 had been passed in England ; and
in 1910 in view of the growth of the volume of Patent work in
India it was considered advisable to overhaul the Indian system
of Patent administration. In March 1910 therefore was introduced
the Bill (being No. 9 of 1910) which eventually culminated in the
Indian Act 2 of 1911 entitled the Indian Patents and Designs
Act 1911 which is in force to-day.
It was under this Act of 1911 that the office of the Controller of
Patents in British India was for the first time created.
Since 1911 there have also been passed, in the nature of legis-
lation supplementary to that Act, certain Amending Acts as
follows : —
(i) Act 19 of 1920 entitled “The Indian Patents and Designs
(Amendment) Act 1920.”
(w) Act 7 of 1930 entitled “The Indian Patents and Designs
(Amendment) Act 1930”.
Of these the Act of 1920 was confined to the provision of reciprocal
arrangements between India and other countries : while the Act of
1930 made considerable amendments to the Act of 1911 over a
wide field.
f 0 App. No. 4 infra .
#1 App. No. 5 infra.
Ch.1] THE PRESENT INDIAN ACT 21
In addition there may be mentionedi as having a bearing on
the subject, certain formal repealing Acts, such as are passed from
time to time to give proper shape to progressive legislation, as
follows : — *
Act 17 of ,1914.
Act 31 of 1920.
Act 11 of 1923.
Act 12 of 1927.
These last mentioned repealing Acts may for all ordinary work*
ing purposes be ignored.
Reference to the Acts.
For purposes of reference the full text of the Act of 1911 and
of the Acts of 1920 and 1930 ; also the Objects and Reasons of
Bill No. 9 of 1910 which culminated in Act 2 of 1911 and the
Objects and Reasons of Bill No. 31 of 1920 which culminated in Act
29 of 1920 and the Objects and Reasons of Bill No. 33 of 1928 which
culminated in Act 7 of 1930 ; also the Report of the Select Commi-
ttee on the Bill which culminated in Act 7 of 1930 (this being the
only Bill of the three for which a select committee was appointed) ;
are all set out in an Appendix below. 2 2
Rales.
It will be noted that under Sections 57 and 77 (i) of the Act of
1911 certain powers were given to H. E. The Governor General to
prescribe fees and to make Rules. In exercise of such powers
certain Rules have been made. The first Rules originally made were
known as the Indian Patents and Designs Rules 1912. 22
Those Rules have now, since 1933, been replaced by other Rules
being the current Rules which are known as the Indian Patents and
Designs Rules 1933. These Rules came into force on 1st April 1933 J
and have legislative effect as if enacted in the body of the Indian
Patents and Designs Act itself. 24 For purposes of reference a copy
of the Rules is set out in an Appendix below. 25
•* See Appendix No. 5 infra.
** First Published on 23rd September 1911, Gazette of India Part II.
** They were published on 11th February 1933 in the Gazette of India
Part. II.
** See Appendix No. 5 infra.
22 THE LAW OF PATENTS IN INDIA
%
Act of 1011 and the Rules thereunder. The present system.
[Chi 1
vM *;’- 1
It is the law now oarrent in British India under this Act of
1911 as amended as above, with the Rules thereunder, and the
Patent administration which is now in force by virtue of this Aot
and these Rules, which are to be considered in the following pages
of this book.
CHAPTER H.
EXTENT OF PATENT RIGHTS NOW OBTAINABLE IN
BRITISH INDIA.
The Form of Letters Patent.
It may now be convenient for purposes of reference and
comparison and as showing how modern Patent Law is developed
from the historical origins, of which brief mention has already been
made, to note here the usual form in which a Patent is now granted
in England.
This reads as follows : —
“EDWARD VIII by the grace of God, of Great Britain,
Ireland, and the British Dominions beyond the Seas, King, Defender
of the Faith, Emperor of India. To all to whom these presents shall
come greeting : WHEREAS ( name of Patentee) of (address) in the
county of (etc.), (occupation), hath declared that he is in possession
of an invention for (description of purpose of invention), that he
claims to be the true and first inventor thereof, and that the same is
not in use by any other person to the best of his knowledge and
belief : AND WHEREAS the said inventor hath humbly prayed that
a patent might be granted unto him for the sole use and advantage
of his said invention : AND WHEREAS the said inventor (herein-
after together with his executors, administrators, and assigns, or any
of them, referred to as the said patentee) hath by and in his complete
specification particularly described the nature of the said invention :
AND WHEREAS WE, being willing to encourage all inventions
which may be for the public good, are graciously pleased to condes-
cend to his request :
KNOW YE, therefore, that We, of our espeoial grace; certain
knowledge, and mere motion, do, by these presents, for* Us, our
heirs and successors, give and grant unto the said patentee our
especial license, full power, sole privilege, and authority, that the
said patentee, by himself, his agents, or licensees, and no others, may
at all times hereafter during the term of years herein mentioned,
make, use, exeroise, and vend the said invention within our United
24
THE LAW OF PATENTS IN INDIA [Ch. II
Kingdom of Great Britain and Northern Ireland, and the Isle of
Man, in such manner as to him or them may seem meet, and that the
said patentee shall have and enjoy the whole profit and advantage
from time to time accruing by reason of the said invention during
the term of. 16 years from the date hereunder written of these
presents : AND, to the end that the said patentee may have and
enjoy the sole use and exercise and the full benefit of the said inven-
tion, We do by these presents for Us, our heirs and successors,
strictly command all our subjects whatsoever within our United
Kingdom of Great Britain and Northern Ireland, and the Isle of
Man, that they do not at any time during the continuance of the
said term of 16 years, either directly or indirectly, make use of, or
put in practice, the said invention, or any part of the same, nor in
anywise imitate the same, nor make, or cause tobemade, any addition
thereto or subtraction therefrom, whereby to pretend themselves the
inventors thereof, without the consent, license, or agreement of the
said patentee in writing under his hand and seal, on pain of incurring
such penalties as may be justly inflicted on such offenders for their
contempt of this our Royal command, and of being answerable to the
patentee according to law for his damages thereby occasioned :
PRO VIDED always, that these Letters Patent shall be revocable on
any of the grounds from time to time by law prescribed as grounds
for revoking Letters Patent granted by Us, and the same may be
revoked and made void accordingly: PROVIDED ALSO that if
the said patentee shall not pay all fees by law required to be paid in
reepect of the grant of these Letters Patent, or in respect of any
matter relating thereto, at the time or times, and in manner for the
time being by law provided ; and also if the said patentee shall not
supply, or cause to be supplied, for our service all such articles of the
said invention as may be required by the officers or commissioners
administering any department of our service, in such manner, at such
times, and at and upon such reasonable prices and terms as shall be
settled in manner for the time being by law provided, then and in
any of the said cases, these our Letters Patent and all privileges and
advantages whatever hereby granted shall determine and become
void notwithstanding anything hereinbefore contained: PROVIDED
ALSO that nothing herein contained shall prevent the granting of
licenses in such manner and for such considerations as they may by
law be granted : AND lastly, We do by these presents for Us, our
Ch.n]
THE PARTS OP LETTERS PATENTS ; /*. 26
f
if
heirs and successors, grant unto the said patentee, that these our
Letters Patent shall be construed in the most beneficial sense for the
advantage of the said patentee. IN WITNESS whereof We have
caused these our Letters to be made Patent and to be sealed as of
the day of , one thousand
nine hundred and
It will be observed that this form of Letters Patent consists
when dissected of six different parts which may be referred to as
follows : —
The address.
The recitals.
The grant of monopoly.
The prohibition.
The provisos.
The direction for the construction of the grant.
The Address.
The address is a public address from the King to the public
being worded “to all whom these presents shall corae. ,, It is sugges-
ted by Hindmarch that the reason for this is that the Letters Patent
contain a bargain between the public and the patentee. This view
is stated, to quote his own words 1 as follows : —
“The only thing which a patentee gives to the public is a
knowledge of his invention, and a patent is, in effect, a bargain
between the patentee and the public, in which the public, in consi-
deration of an invention, so that they may afterwards be enabled to
practise it, grant to him the sole use of his invention for a limited
time. But if an invention is not new, the patentee does not commu-
nicate anything to the public which they did not know before, and
therefore the patentee gives them nothing which can be considered
as a consideration for the grant, and therefore the patent is wholly
void."
Even apart from this it is natural that the address should be
by the King to all his subjects since the Letters Patent not only
contains a grant to the single patentee but a prohibition, necessary
in order to make the grant effective, which is issued to all the
public.
1 Hindmarch (1846) page 103.
4
THE LAW OF PATENTS IN INDIA
[ch. n
The Recitals.
The recitals contain what are called “the suggestions” which
are deemed to have been made to the Crown as the basis of the re-
presentations on which the Patent has been granted. An analogy
might be made with the proposal made by an assured to an
Insurance Company as the basis on which a policy of insurance is
issued. If a suggestion has been made which is false, the patent
will be void : whether this has been made wilfully or innocently.
In this English form of Letters Patent it is seen that there are
four separate recitals to the following effect : —
(i) That the Patentee has declared that he is in possession of
an invention, that he claims to be the true and first inventor and that
it is not in use by any other person to the best of his knowledge and
belief.
(ii) That the Patentee has applied for a patent.
(iii) That the Patentee has particularly described the nature
of the invention in a complete specification.
These first three recitals clearly indicate the representations
and statements deemed to have been made by the Patentee.
(iv) That the Crown “being willing to encourage all inven-
tions which may be for the publio good” has out of such motives
made the grant. This fourth recital is worded in the form of a
declaration of what has been done by the Crown. In this it is the
statement of the Crown’s motive which is important. There may be
said to be implied in this recital also a representation by the Patentee
that the grant of his Patent will not be immoral or illegal. Under
section 75 of the English Act of 1907-1932 which has its counterpart
in section 69 of the Indian Act of 1911, the Controller is empowered
to refuse a grant if contrary to law or morality.
By reason of these four recitals, also, the Patentee may be
said to be deemed to represent that his invention is novel and in all
respects the proper subject matter and material for a Patent and that
it has been properly described. It will be observed on further considera-
tion of such matters in another chapter that there are very definite
requisites called for in respect of an invention and of the relative
.application for a Patent in order that an applicant may be properly
entitled to a good Patent. In the absence of such requisites any
Patent which may have been granted will be either invalid entirely or
27
Ch. II ] THE GBANT OF MONOPOLY
of only partial validity. Whether it is more proper to .say that in
such a case the Patent is invalid because of the misrepresentations
made by the Patentee concerning the necessary requisites or because
without the existence of the necessary requisites the Crown has no
proper prerogative to make a valid grant is for practical purposes
immaterial. The practical result whichever way the matter is viewed
is the same ; the complete or partial invalidity of the Patent.
The Grant of monopoly.
This consists of the following words : —
“ KNOW YE, therefore, that We, of our especial grace, certain
knowledge, and mere motion, do, by these presents, for us, our heirB,
and successors, give and grant unto the said patentee our especial
license, full power, sole privilege, and authority, that the said
patentee, by himself, his agents, or licensees, and no others, may at
all times hereafter during the term of years herein mentioned, make
use, exercise, and vend the said invention within our United King-
dom of Great Britain and Northern Ireland, and the Isle of Man, in
such manner as to him or them may seem meet, and that the said
patentee shall have and enjoy the whole profit and advantage from
time to time accruing by reason of the said invention during the
term of 16 years from the date hereunder written of these presents
It should be observed, though obvious, that in spite of the
above wording in the form of a grant, the Patentee himself was fully
as much entitled to “make, use, exercise and vend” his invention
before the grant as he is after the grant. He requires no “License,
power, privilege or authority” to be granted him from the Crown to
enable him to do this. The grant therefore in a sense is no grant at
all in this respect ; and is no grant of any additional rights of pro-
perty to the Patentee. The resulting monopoly which is given to
the Patentee is made effective by the prohibition on others but
himself. For this reason it has been said that a Patentee’s rights
constitute a mere chose in action and do not in the proper sense
amount at all to any right of property.
The Prohibition.
This consists of the following words : —
“And to the end that the said patentee may have and enjoy the
sole use and exeroise and the full benefit of the said invention, We
do by these presents for US^our heironsand successors, strictly oom-
THE LAW OF PATENTS IN INDIA
rcfc.ii
mand all oar subjects whatsoever within our United Kingdom of
Great Britain and Northern Ireland, and the Isle of Man, that they
do not at any time during the continuance of the said term of 16
years, either directly or indirectly, make use of, or put in practice,
the said invention, or any part of the same, nor in anywise imitate
the same, nor make, or cause to be made, any addition thereto or
subtraction therefrom, whereby to pretend themselves the inventors
thereof, without the consent, license, or agreement of the said paten*
tee in writing under his hand and seal, on pain of incurring such
penalties as may be justly inflicted on such offenderes for their
contempt of this our Royal command, and of being answerable to
the patentee according to law for his damages thereby occasioned/*
As previously observed the effective area of the prohibition is
limited to the United Kingdom of Great Britain and Northern Ire*
land and the Isle of Man. The period of time is limited to 16 years.
The Provisos.
It is essential for the proper understanding of Patent Law
and Patent Rights to appreciate that the grant of letters Patent is
not final or irrevocable.
It has been already indicated when considering the Recitals
that the Patent may be at a future date held to have been invalid
ab initio for lack of certain requisites called for in and concerning
the invention itself.
The provisos also expressly indicate certain events in which a
grant that may have been made will be held to be invalid. The whole
essence of the grant of Letters Patent may be said to be that the
grant is only made by the Crown, subject to the proviso that if there-
after it should be found that the circumstances in which the grant was
made are proved to have been such that at the time no grant ought
properly to have been made, then the Patent will be invalid and may
be revoked. Also that the grant is only made by the Crown subject
to the proviso that the Patentee will not abuse his monopoly rights
given to him under the Patent ; and similarly that if he is proved
to have abused his monopoly rights then these rights may be taken
away from him and the Patent revoked. The grant is also only
made subject to the proviso that the requisite fees are paid and if
not the Patent will be revoked. The grant is also subjeot to the
proviso that the Crown reserves to iteelf the right to grant licenses
Oh. n ] FORM OF LETTERS PATENT IN INDIA 29
in spite of the monopoly. This power the Crown is only likely to
exercise either for use by contractors under Government departments
or as a remedy against abuse of the monopoly by the Patentee in
cases where it is proved that he is not himself manufacturing
articles relating to his invention either in sufficient quantities for
the good of the State and public service or at proper prices.
The Construction.
After the provisos are found the following words : —
“And lastly Wo do by these presents for Us, our heirs and
successors, grant unto the said Patentee, that these our Letters
Patent shall be construed in the most beneficial sense for the advan-
tage of the said Patentee”.
It may be remarked that this beneficial construction, for what
it is worth, applies only to the Letters Patent and not to the
specification.
Other forms of English Patents.
The form of a Patent of Addition differs slightly in wording
but not materially from the above.
The form of Patent which is granted under Section 91 of the
English Aots 1907-1919 by way of reciprocal arrangements also
differs slightly in the recitals.
The form of Letters Patent in India.
The form in which a Patent is now granted in British India
is as follows : —
“GOVERNMENT OP INDIA.
Patent.
No of 19
Whereas A. B. of bath declared that he is in
possession of an invention for (quote title)
and that he is the true and first inventor thereof (or
the legal representative or assign of the true and first inventor) and
that the same is not in use by any other person to the best of his
knowledge) information and belief.
And whereas he hath humbly prayed that a patent might be
granted to him for the said invention.
90
THE LAW OF PATENTS IN INDIA
[ch. n
And whereas he hath by and in his specification (of which a
copy is hereunto annexed) particularly described and ascertained
the nature of the invention and the manner in which the same is to
be performed.
The Governor General in Council is pleased to order by these
presents that the above said petitioner (including his legal represen*
tatives and assigns or any of them) shal)« subject to the provisions
of the Indian Patents and Designs Act, 1911, as patentee, have the
exclusive privilege of making, selling and using the invention
throughout British India (including British Baluchistan and the
Santhal Parganas) and of authorizing others so to do for the term
of sixteen years from the day of 19 subject
to the condition that the validity of this patent is not guaranteed by
Government and that Government shall have the right to use the
invention either without payment or on such terms as it may con-
sider reasonable) and also provided that the fees prescribed for the
continuation of this patent are duly paid.
In witness whereof the Governor General in Council has
caused this patent to be sealed as of the day of
19.
Signature of Controller
Date of sealing
[Note . — Renewal fees will be due on this patent, if it is to be
continued, on the ...day of. 19 and on the
same day in each year thereafter .”]
Comparison of the Indian Form with the English.
The Address.
In the Indian form there is no address. It must be taken for
granted.
The Recitals.
The general effect of the three recitals is the same in the Indian
as in the English form.
It will be noted however that in the Indian form the
following additional words are inserted : — “or the legal represen-
tative or assign of the true and first inventor". The result may be
some confusion as to who is the proper person to apply for a Patent.
This matter is more fully cosidered in another place.
Ch. n ] INDIAN AND ENGLISH FORM— COMPARI SON
31
If the Indian form loses something in exactitude through the
omission of the words — “the sole use and advantage of’ — in the
second recital, the sense remains the same.
The remaining differences in wording are chiefly due to there
being in India only one specification and not, as under the English
system, the possibility for a provisional specification as well as a
complete specification.
The Grant of Monopoly : and the Prohibition.
Though in less formal words, the Indian Form must be consi-
dered to have the same legal effect as the grant and prohibition of
the English form taken together. The grant and prohibition arc in
the Indian form contained in tho following words : —
“The Governor General in Council is pleassd to order by these
presents that the above said petitioner (including his legal repre-
sentatives and assigns or any of them) shall, subject to the provi-
sions of the Indian Patents and Designs Act, 1911, as patentee, have
the exclusive privilege of making, selling and using the invention
throughout British India (including British Baluchistan and the
Santhal Parganas) and of authorizing others so to do for the term
of sixteen years from the day of 19 M .
The Provisos.
It is important to observe that these provisos put in less
formal language are to the same effect as those already discussed
when considering the English form.
The Construction.
The clause referred to in the English form as “the construction”
is omitted from the Indian form. This therefore makes it unneces-
sary further to trouble with that somewhat obscure clause.
Period of Patent.
The term of all Patents now granted in India is 16 years. This
is as provided by Section 14 of the Indian Patents & Designs Act of
1911 and amended by Section 9 of the Indian Patents & Designs
(Amendment) Act of 1930 (Act 7 of 1930).
Before the Act of 1930 the term was 14 years. The amending
Act of 1930 came into force from 1st July 1930. By that Act it was
also provided that the period of 16 years should also be the period of
operation for any existing patents which were unexpired on 1st July
THE LAW OP PATENTS IN INDIA
tCh.lt
1930. Also that existing licenses should similarly be extended if
the licensee so desired. Theee and certain other provisions are now
embodied in subsections (1), (1A), and (IB) of Section 14 of the
present Act as amended.
A patent is made automatically to cease if the prescribed fees
are not paid within the prescribed times. But provision is made in
the Act for an extension of time in such a case up to a maximum
period of three months on application to the Controller made within
three months after such expiration of time. 2
In the case of patents of addition such patents are, unless
converted into original patents, only effective for the period for which
the patent for the original invention remains in force and no longer.
See section 15 of the Act. (Further reference to patents of addition
will be found under the chapter dealing with application for
patents.)
Curtailment of term.
After a Patent has once been granted it can only be terminated
before the expiry of its full term in the following ways : —
(i) It may cease for non-payment of fees : (under Section 15.)
(ii) The Patentee may offer to surrender the Patent. This may
be done at any time by giving notice to the Controller.
Revocation under these circumstances if made is made
by the Controller : (under section 24 of the Act.)
(iii) The Patent may be revoked by order of the High Court
made on application for revocation. Such revocation
can only be granted for the grounds stated in section
26. Such application may apparently be made in India
at any time during the currency of the Patent. But it
can only be either by the Advocate General or any
person authorised by him or by certain persons who
allege themselves to be interested in the matter in
certain circumstances as stated in the section.
(iv) The Patent may be revoked on the ground that the demand
for the patented article in British India is not being
met to an adequate extent and on reasonable terms,
or, (but in this case only if the requisite application is
See Section 14 ibid.
Ch. II]
REVOCATION OF PATENT
made after four years from the grant of the Patent)
on the ground that the patented article or process is
manufactured or carried on exclusively or mainly
outside British India. The application for revocation in
either case is required to be made to H. E. the Governor
General in Council. Revocation under these circums-
tances if made is made by H. E. the Governor General
in Council : (under section 22 or section 23 of the Act).
(v) Provision is also made under the Act for power for the
Patent to be revoked on public grounds. This is under
section 25 the wording of which is as follows : —
“A patent shall be deemed to be revoked if the Governor
General in Council declares, by notification in the Gazette of India,
the patent or the mode in which it is exercised to be mischievous to
the State or generally prejudicial to the public”.
Extension of Term.
In exceptional cases the term of a Patent may be extended.
Application for this purpose is required under the Act to be made to
H. E. the Governor General in Council. He may then either dispose
of the application himself or refer it to a High Court for decision.
(See Section 15 of the Act.) The main ground contemplated for the
prolongation of a Patent in this way is that the Patentee has not
been fairly remunerated by his Patent.
Territory over which the Patent is effected.
A Patent sealed with the seal of the Indian Patent Office
confers on the Patentee the exclusive privilege of making, selling
and using the invention throughout British India and of authorising
others to do so : British India for this purpose includes British
Baluchistan and the Santhal Parganas : and the territory covered
extends also to the Shan States.
See Section 1 (2) also section 12 of the Act : also the model
form of Patent quoted above.
The extension to the Shan States was made under the Burma
Laws Aot 1898 as amended by Regulation II of 1910. The notice
effecting such extension whioh was published in the Burma Gazette
dated 6th September 1919 Part I page 696 and the Indian Gazette
dated 18th October 1919 Part II page 1778 reads as follows : —
. “In exercise of the powers conferred by section 10 of the
6
34
THE LAW OF PATENTS IN INDIA
[ch. n
Burma Laws Act, 1898, as amended by Regulation II of 1910, the
Lieutenant-Governor is pleased to extend to the Shan States the
Indian Patents and Designs Act, 1911 and the Rules thereunder,
subject to the following modification : —
Modification
If any proceeding is taken in respect of an infringement in the
Shan States of a patent, which antedates the extension of the Indian
Patents and Designs Act, 1911, to the said Shan States, against any
person who may have availed himself of the subject matter of that
patent before the lapse of one year from the date of the extension,
the Court before which the proceeding is taken, may, if it thinks fit,
refuse to award any damages in respect of such infringement.
By order, C. M. Webb, Chief Secretary to the Govt, of Burma.
(Dated) RANGOON, The 5th September 1919”.
Difference between Patent Rights and certain other exclusive
rights.
In all cases where there is in existence a copyright, or a trade-
mark, or a registered design, or where under the common law any
particular manufacturer or merchant has acquired a reputation for a
specific and distinctive get-up under which his goods are marketed, a
certain person, that is to say, the owner of the copyright, or of the
trade-mark, or of the registered design, or the person who has
acquired the reputation in respect of the particular get-up, as the
case may be, is entitled to certain exclusive rights of manufacture
or sale or both : just as, where there is in existence a Patent, the
Patentee is entitled to oertain exclusive rights of manufacture or
sale or both. Exclusive rights such as those now under considera-
tion would not appear to bo obtainable except for : (1) copyright,
(2) trade-mark, (3) registered design (4) distinctive get-up such as to
sustain an action at Common Law for Passing-off and (5) for a
Patent. But the nature of the rights and the circumstances in which
and the subject matter over which Buch rights are obtainable differs
in each of these cases.
The right in the case of copy-right and in the case of a distinc-
tive get-up such as to sustain an action for passing-off is not an
artificial right but a right of property held by the individual at
Common Law. The right is created under natural force of law as
soda As the thing or . chattel to which the right relates is oreated :
DIFFERENCE BET. PATENT & OTHER RIGHT®
89
Cb.II]
precisely as the legal rights of a parent over an infant are created as
soon as the infant has life. The right in the case of a registered
design or Patent or in the case of an English statutory trade-mark
is an artificial right (created by Statute or grant of Letters Patent)
which does not come into existence with the creation of the mark or
design or invention but only after registration of the trade-mark or
design or after grant of Patent.
Patent rights are granted from the Crown by virtue of its
inherent prerogative ; they are now granted according to certain
well defined regulations in accordance with certain Statutes ; in
this sense Patent rights are purely statutory since no individual
possesses them inherently by virtue of any inherent right of private
property before grant. In another sense Patent rights do not depend
upon Statute since the Crown has and has always had an inherent
power to confer these rights before any Statute existed and they
depend therefore in essence on the will of the Sovereign. Trade-
mark rights arc purely the creation of Statute. In India there is no
Trade Mark Act : consequently in India there are strictly speaking
no Trade Mark rights, such as are conferred by Statute in England
and the person using a Mark in India is relegated to such rights as
he may possess at Common Law as a result of the building up of a re-
putation. The legal right which comprises “Copyright” being a right
of private property owned by the individual as a part of his inherent
rights at Common Law, needs neither statute nor grant from the
Crown or from anybody for its creation. As soon as' any thing sus-
ceptible of being the subject of copyright is brought into existence,
the right of copyright is simultaneously and automatically brought
into existence. Copyright is as much a part of a new book as its
cover or its title ; just as much as, say, the right of inheritance belongs
to a new-born child without grant from the Crown or any Statute.
The extent of this copyright is now also largely regulated by Statute.
Regarding rights relating to Passing-off, the exclusive right in
commerce to a particular form of get-up for particular goods such as
is required to sustain an action for passing-off against a competitor
is a right which arises, when it arises at all, without grant and with-
out the aid of any statute at Common Law. It is only created in
certain circumstances and, in particular, only if a certain special
reputation has in faot been created then the owner of the reputation
is automatically possessed of certain rights at Common Law which
THE LAW OF PATENTS IN INDIA
[Ch. n
protect him against interference from competitors by passing-off.
Unlike copyright it cannot be said to be strictly a right of property.
Thus the origin of the exclusive right in the oase of a Patent Right
is in the Crown’s prerogative ; in the case of Statutory Trade-Marks
is in the Statute ; in the case of Copyright this is in a right of
personal property at Common Law but regulated by Statute ; and
in the case of rights relating to Passing-off these rights have their
origin in the Common Law not as rights of property but as personal
rights, similar to the personal rights which an individual has
against being run down in the street.
Regarding the nominal period of currency of these various
exclusive rights, Patent Rights run for 16 years ; statutory Trade-
Mark rights in India, being non-existent for no period ; Copyright
for a period up to 25 years after the death of the author ; and
Passing-off rights (including common law rights in trade-marks)
continuously as long as the existence of the requisite reputation.
The Patent Rights begin from the date of the grant of Patent :
Statutory Trade-Mark rights in England from the date of registra-
tion : Copyright from the date of publication : while Passing-off
may in a sense be said to begin from the date of the creation of the
required reputation.
Importance of the effect of the grant of a Patent.
It is the monopoly and the certainty of the monopoly for a
fixed time and place which is the outstanding benefit obtainable by
taking out a Patent for an invention. In no other way can an
inventor arrive at such an advantageous legal position except by
obtaining a Patent. The Patentee through his grant not only
requires a passive legal right to a monopoly which authorizes him to
hold a monopoly : the law also gives him an active right to prevent
others from encroaching on his monopoly. When the time, that is
16 years, in which the monopoly will run with certainty is considered
as a period in proportion to a man’s life, for example the life of the
inventor, it is appreciated that it is no small period for the protec-
tion of an invention. When the area over which the monopoly will
run, that is to say the whole of. British India which is in the
neighbourhood of 1,096,000 square miles, is considered in proportion
to the whole inhabitable world it is found to be no mean
territory over which an Indian Patent gives its protection.
Ok. nj IMPORTANCE OF THE EFFECT OF THE GRANT 37
If by obtaining an Indian Patent the benefit of a monopoly may
be obtained over a sales territory comprising approximately one
seventh part of the world’s inhabitants, 3 who may conceivably be
every one a prospective purchaser, is it good business for the inven-
tor or the business man to leave the Patent Law and the system of
Patent Administration in India uninvestigated ?
* The population of the world being taken at about 1,997,000,000 and the
population of British India being taken according to the 1933 census at
271,526,933.
CHAPTER III.
CONDITIONS IMPOSED ON THE PATENTEE.
Having taken a general view in the previous chapter of the
scope of the benefits obtainable by a Patentee from the holding of a
Patent, it will be convenient now to note broadly the extent of the
conditions imposed on a Patentee and the obligations and duties to
be fulfilled by him on his side during the continuance of the grant.
It will be possible then to judge in any given circumstances whether
a particular invention is worth patenting. In many cases it is
likely that a prospective Patentee will be surprised at the large
scope of the benefits and the lightness of the obligations.
The only conditions imposed by the Crown on the Patentee for
the continuance of the grant of the Patent to him are of two kinds.
For one thing, in order to prevent abuse by him of his monopoly,
certain obligations are imposed upon him making it necessary in
certain events that he will either work the Patent himself or allow
others to do so. For another thing certain taxes are levied from him
which are known as renewal fees.
Terms as to Compulsory working.
Since one of the chief objects of any Patent system is to pro-
mote new inventions in the country to the benefit of its people, it is
clear that this object is entirely defeated if after grant of a Patent
to any individual that individual then takes no further interest or
action. The result then would be, if the Patentee does not work and
sell his invention or arrange for this, no one in the country might
do so. So far from adding to the wealth or comfort of the public,
the thing sought to be added would be placed under total prohibition
throughout the length and breadth of the country. It is clearly
desirable that there should be some provision of law which will
prevent or discourage Patentees from leaving their Patents to lie
fallow in such way.
Different countries favour different systems. It may be that
with peoples of different habits and different states of culture the
same provisions of law will have widely different effeots. The policy
Ch. m] PROVISIONS FOR ENSURING WORKING OF PATENTS 39
of Patent Law in any country ought to be that best suited to effect
the biggest development and best use when developed of all inven-
tions for the benefit of that country. The best means of doing this
may be found to vary among different peoples.
Certain features of the problem are these. After an inventor
first receives the grant of a Patent it is bound to take him some
time before the invention can be put on the market effectively.
Arrangements not only have to be made for manufacture, which may
entail considerable work, and for negotiations in his getting in touch
with the right persons to work the manufacture, and, possibly, for
various negotiations as to the licenses or other terms on which the
manufacture is to be done ; but arrangements will also have to be
made, whether by the inventor or by the manufacturer, for making
the invention sufficiently known for a demand to be created. In any
case it may be to a considerable degree a question of time before the
invention becomes known : this will be so even if the inherent merit
of the invention is such that the finished article will to some extent
sell itself. Hence it is clear that if the Government of a country
were to impose too severe terms in respect of compulsory working
of the invention immediately from the grant of the Patent, the only
result would be that in many, if not most, cases the invention would
never be worked at all but merely abandoned : the practical result
being the same as, or worse than, if no provisions for compulsory
working were put in operation at all.
In India the provisions directed to ensuring the working of
Patents granted are on lines similar to the provisions which have
been evolved from experience of such legislation in England. The
Patentee is allowed a period of four years almost entirely free from
any compulsion ; during which period (except for one minor excep-
tion) no complaints can be made against him by anyone for his
idleness, and no steps can be taken by anyone against him on the
ground of his non-working of his Patent. After these four years if
he continues to fail to work his Patent, provision is made under the
Act for persons interested to make complaint to the Governor
General in Council for certain remedies to be enforced against him.
The remedies provided under the Act are of two kinds : the one is
by way of total revocation of his Patent, the other by the ordering
of the issue by him of compulsory licenses in respect of his Patent
to a Petitioner. The circumstances in which either of these reme-
THE LAW OF PATENTS IN INDIA
[Ch.nl
dies may be enforced are described in Sections 22 and 23. These
remedies will only be applied under section 22 where it is found that
the demand for the patented article in British India is not being
met to an adequate extent and on reasonable terms. It will be obser-
ved, after a petition haB been lodged every opportunity is given to
the Patentee to come to an arrangement with the aggrieved party ;
and that no order will be made and in fact the Petition is not to be
adjudicated upon if the parties come to such an arrangement between
themselves. It will also be observed that the more drastic remedy
of revocation is not to be resorted to exoept where it is found that
the issue of compulsory licenses will not suffice. It will be observed
that it is necessary for the party aggrieved to establish a case that a
trade or industry in British India is being prejudiced under section
22 ; or else that the Patented article or process is carried on or
manufactured exclusively or mainly outside British India under
section 23.
Revocation under either section can in no case be ordered
before the expiration of four years from the date of the Patent ; nor
can the alternative remedy by issue of compulsory licenses be
enforced before such four years in any case where the ground of
complaint is manufacture outside British India under section 23.
It appears that there is no protected season in which the filing of
petitions for compulsory licenses is forbidden where the ground of
complaint is that a trade or industry has been unfairly prejudiced
under section 22. Section 23 A gives statutory efficacy to any order
which may be made under section 22 or section 23. 1
The scale of Renowal Fees now in force in British India under
the Act is to be found in the first schedule to the Rules made under
the Aot : this first schedule was enforced under the authority of a
Notification by the Governor General in Council No : A-197 dated
17th July 1930. The scale is as follows : —
For the 1st, 2nd, 3rd and 4th years after
the date of the Patent. ... ... Nil.
Before expiration of 4th year in respect of
the 5th year Ml ••• Rs. 50 0 0
1 These matters are further considered in Chapter VIII and Chapter XL
Ch. Ill]
RENEWAL FEES IN INDIA
Terms as to Renewal tees.
Before expiration of 5th year in respect of
the 6th year ... ... ... Rs.
Before expiration of 6th year in respect of
the 7th year ... ... ... Rs.
Before expiration of 7th year in respect of
the 8th year ... ... ... Rs.
*41
-,y
*v
50 0 0
50 0 0
50 0 0
Before expiration of 8th year in respect of
the 9th year
In respect of patents the application for
which was made before 1st July 1930 ... Rs. 50 0 0
or, In respect of patents the application for
which was made on or after 1st July 1930 Rs. 100 0 0
Before expiration of 9th year in respect of
the 10th year ... ... ... Rs. 100 0 0
Before expiration of 10th year in respect of
the 11th year ... ... ... Rs. 100 0 0
Before expiration of 11th year in respect of
the 12th year ... ... ... Rs. 100 0 0
Before expiration of 12th year in respect of
the 13th year : —
In respect of patents the application for
which was made before 1st July 1930 ... Rs. 100 0 0
or, In respect of patents the application for which
was made on or after 1st July 1930 ... Rs. 150 0 0
Before expiration of 13th year in respect of
the 14th year : —
Ip respect of patents the application for which
was made before 1st July 1930 ... Rs. 100 0 0
or, In respect of patents the application for which
was made on or after 1st July 1930 ... Rs. 150 0 0
Before expiration of 14th year in respect of
the 15th year • •• Rs. 150 0 0
Before expiration of 15th year in respect of
the 16th year . ... ... ... Rs. 150 0 0
6
THE LAW OF PATENTS IN INDIA
[Ck. m
The fees for two or more years may be paid in advance.
The above are the Renewal Fees which have to be paid by any
Patentee in India so long as his Patent is current. No other fees
are payable by him during its currency.
It will be observed that, as in the case of the provisions in
force to effect compulsory working (by compulsory licenses or revo-
cation), so with the renewal fees ; the Patentee is given the benefit of
a protected season of four years after the grant of the Patent during
which he is entirely free from having to pay any renewal fees.
Statutory authority.
Section 57 of the Act is the Statutory authority under which
these fees are payable. The section makes obligatory in respect of
the grant of patents “such fees as may be prescribed by the Governor
General in Council” ; subject to a proviso that the fees so to be
prescribed shall not exceed a certain maximum scale of fees which
is referred to in the section and set out in a Schedule to the Act
itself.
Thus no alteration of the renewal fees now in force which
should go beyond the maximum scale could be effected except by an
Act of the Central Legislature in the form of an Act amending the
Act of 1911 : any alteration within the limits of the maximum
scale could be effected by an executive
Goneral in Council.
order of the
Governor
The maximum scale referred to by Section 5 is as follows
: —
FEES.
On application for a patent
. . .
...
Rs.
10
Before sealing a patent ...
...
...
Rs.
30
Before the expiration of the 4th
date of the patent . . .
year
from the
• • •
Rs.
50
Before the expiration of the 5th
date of the patent ...
year
from the
Rs.
50
Before the expiration of the 6th
date of the patent
year
from the
• a.
Rs.
50
Before the expiration of the 7 th
date of the patent ...
year
•••
from the
Rs.
50
Ch. HI]
RENEWAL FEES IN UNITED KINGDOM
43
Before the expiration of the 8th year from the
date of the patent
Before the expiration of the 9th year from the
date of the patent ...
Before the expiration of the 10th year from the
date of the patent ...
Before the expiration of the 11th year from the
date of the patent
Before the expiration of the 12th year from the
date of the patent
Before the expiration of the 13th year from the
date of the patent ...
Before the expiration of the 14th year from the
date of the patent ... #
Before the expiration of the 15th year from the
date of the patent
Provided that the fees for two or more years
may be paid in advance.
Rs. 100
Rs. 100
Rs. 100
Rs. 100
Rs. 150
Rs. 150
Rs. 150
Rs. 150
On application to extend the term of a patent ... Rs, 50
Before the expiration of each year of the ex-
tended term of a patent or of a new patent
granted under section 15 ... ... Rs. 150
It will be seen that the scale now actually in force is in only
certain few instances lower than the maximum scale.
English Scale.
For purposes of comparison it may be of interest to note the
scale of renewal fees which are payable on English Patents under
the English Act in the United Kingdom. The English scale of
renewal fees is as follows : —
Renewal Fees.
Before the expiration of — £. e. d%
4th year from the date of Patent, andjin respect of the 5th year 5 0 0
5th „ „ „ „ „ 6th „ 6 0 0
6th n ,« ,« n >* 7th n 7 0 0
7th „ ,, „ „ „ 8th „ 8 0 0
U THE LAW or PATENTS IN INDIA [Cb. ffl
8th year from the date of Patent, and in respeot of the 9th year 9 0 0
9th
99
99
99
99
99
10th
99
10
0
0
10th
99
99
99
99
99
11th
99
11
0
0
11th
99
99
•9
99
99
12th
99
12
0
0
12th
99
99
99
99
99
13th
99
13
0
0
13th
99
99
99
99
99
14th
99
14
0
0
14th
99
*9
99
99
99
15th
99
15
0
0
15th
99
99
99
99
19
16th
99
16
0
0
In England there is a further provision in force under which
if the Patentee notifies the Patent Office that he desires his Patent
to be endorsed "Licenses of Right”, the renewal fees which become
subsequently payable are only half the amounts stated in the
above mentioned English Scale.
There is no similar provision in British India for Licenses as
of Right or for the endorsement* of a Patent in that manner ; or for
such reduced fees.
General considerations affecting scale of renewal fees.
The imposition of renewal fees and the provision that if the
fees are not paid the patent will cease may be looked upon as a
desirable means in the public interest of preventing the continu-
ance of useless patents. If a patent is unrcmunerative and useless
to its owner, it is unlikely that he will continue to pay the renewal
fees. Thus the patent is wiped off the books without waste of time
and labour. This may save the country from having to employ such
additional officials as might otherwise have to be employed in con
nection with the records of a mass of useless patents. It also
ensures that the register is an effective one showing for the most
part effective patents only. It also ensures that* whatever benefit
may exist in relation to inventions which do not form the subject of
continuing effective patents, falls back at once into the stock of
public knowledge and is available for public use. As soon as
the renewal fees are high enough for this, they are high enough
altogether from the point of view of mere jurisprudence. Apart
from this it may be considered from an economio point of view
desirable for the renewal fees to be fixed at a height which with other
Patent fees will be enough to pay for the upkeep of the Patent
Qffioe. It may well be contended by patentees that renewal fees
need in any event not be raised beyond this point. It is natural
Ch,m] PATENT FEES A PUBLIC REVENUE 46
however for any Chancellor of the Exchequer or Finance Member
to regard such renewal fees as a potential source of additional
public revenue. It would seem that in England Patent fees
not only pay all expenses of the Patent Office but do supply a
considerable contribution to the public revenue. 2 In British India
also fees collected in respect of Patents more than pay for the cost
of upkeep of the Indian Patent Office ; as may be seen from a
perusal of the Annual Reports of the Patent Office for recent years.
These figures are interesting as showing the following nett profit to
Government by excess of income over expenditure in respect of the
Indian Patent Office : viz : —
Income of Patent Office
including fees & sales
Expenditure of Patent
Office including
salaries, printing etc.
Profit to Govt,
from Patent
Office.
Bs.
Bs.
Rs.
1929.
2,04,003- 6-0
82,919- 5- 4
1,21,084- 0- 8
1930.
2,05,363-13-0
1,02,662- 0- 1
1,02,701-12-11
1931.
1,91,420- 3-0
93,500-10- 1
97,919- 8-11
1932.
1,89,388-14-3
80,790- 5-11
1,08,598- 8- 4
1933:
1,93,142- 0-0
83,304-12- 2
1,09,837- 3-10
From any point of view there must be a limit beyond which
the imposition of higher fees must tend to lower the annual total of
new Patents applied for as well as the number of Patents annually
renewed. It may be a matter of great importance also during which
period of the life of the Patent the heaviest fees are levied. It is
believed that when in the United Kingdom by the Act of 1883 the
initial fees payable on grant of Patent were reduced by more than
five sixths, though the total fees were only reduced by about one
eighth, the effect was that the number of applicants for Patents was
immediately trebled.
It is no doubt fair that the higher fees should only be charged
* The corresponding figures for the English Patent Office were for
1933 : — total income £588,836-4-4 of which receipts for Patents fees alone were
£503,846-18-6, total expenditure £415,076-3-7, profit £173,760-0-9: and for
1934 ‘.—total income £629,547-5-9 (an equivalent of about Its. 81,84,111-0-0) of
which receipts for Patents fees alone were £540,780-18-3, (an equivalent of about
Be. 76,30,153-0-0) total expenditure £416,835-13-3 (au equivalent of about
Ba. 54,18,868-0-0), profit £212,711-12-6 (an equivalent of about Bs. 27,65,253^0).
4<J THE LAW OF PATENTS IN INDIA [Ch.HI
after the Patent has had time to reach the stage of being a profit-
making concern.
The method in force in the United Kingdom of halving the
fees where the Patent is endorsed “Licenses of Right” also appears to
be a fair scheme for reducing the amount of tax payable by the
Patentee and might with advantage be adopted in India.
Consequences of non-payment.
When renewal fees become payable, it is essential for the
Patentee to pay these fees, if he desires the continuance of the
Patent ; and to pay them punctually within the time allowed him.
Failure to pay causes automatic termination of the Patent under
section 14(2) of the Indian Act by which it is provided as follows : —
“A patent shall, notwithstanding anything therein or in this
Act, cease if the patentee fails to pay the prescribed fees within the
prescribed times :
“Provided that where the patentee, before, or within three
months after, the expiration of the time for payment, applies to the
Controller for an extension of time by any period not exceeding
three months, the patent shall, on payment of such additional fee as
may be prescribed, be continued or revived, as the case may be,
during, but not beyond, the period of extension applied for”.
There is no penalty for the non-payment of any renewal fee.
Nor is it any sort of an offence. The Patentee can cease to pay the
renewal fees at any time: with the consequence only, as stated above,
that the Patent then automatically ceases.
Extension of time for payment.
Extension of time may be obtained up to a limit of three
months as is clear from section 14(2) above. Additional fees charge-
able for such extension of time are : —
Rs. 10/- for one month.
Rs. 20/- for two months-
Rs. 30/- for three months.
The application for extension of time is to be made on a standard
Form, being Form No. 4. 8
Method of payment of the renewal fees.
Rule 5 of the Indian Patents and Designs Rules 1933 governs
See infra .
Ch. in]
HOW RENEWAL FEES PAID
47
the method of payment of these as of other fees. The second part
of this rale reads as follows
“Fees may be paid in cash at the office, or may be sent by
money order or postal order or cheque payable to the Controller at
Calcutta. Cheques not carrying the correct addition for commission,
and other cheques on which the full value cannot be collected in
cash within the time allowed for payment of the fee, shall be accept-
ed only at the discretion of the Controller. Stamps shall not be
received in payment of fees”.
For further instructions Patentees will find the following
directions given in the Patent Office Handbook (5th edition) at
page 115 by the Controller of Patents for the assistance of persons
paying fees: —
“Fees. The fees prescribed in the 1st Schedule to the Indian
Patents and Designs Rules, 1933, should be paid in the manner
prescribed in rule 5 of the said Rules. Where cheques are offered
in payment of fees, it must be clearly understood that the Office
cannot hold itself responsible for any delay that may occur in the
collection of cash on the cheques ; any cheque not payable in Cal-
cutta is subject to commission for which due allowance should be
made. In cases where it is not possible to have the fees handed in
at the Patent Office, it is preferable to send them by money-order
or postal order payable at Calcutta to the Controller of Patents and
Designs, and to advise him that they have been so sent.
Stamps will not be received in payment of fees.
A proceeding in respect of which a fee is payable shall be of
no effect unless the fee has been paid.
Fees prescribed in the Act and the Rules are paid in respect
of admitting the applications or requests accompanying the fees and
not in respect of the final orders granting such applications or
requests. If the applications or requests are refused the fees in
respect of the same will not be refunded”.
Qualifications of the Patentee.
What personal and other qualifications are required in an
applicant in British India for a Patent are considered in a subse-
quent chapter.
CHAPTER IV.
COMMERCIAL FACTORS ARISING WHEN DECIDING
WHETHER TO APPLY FOR A PATENT— RISK OF
RELYING ON MERE SECRECY OF THE IN-
VENTION — VALUATION OF AN INVEN-
TION-VALUATION OF A PATENT
—ACTUAL VALUES OF PAT-
ENTED INVENTIONS.
It ma not be out of place now to consider certain matters
relating to the grant of any Patent from a business rather than
from a legal point of view. It may be that business factors
even more than such matters as were mentioned in the last two
chapters, will affect the mind of a person contemplating making
application for a Patent ; and it may be only after the consideration
of these matters that he will come to a decision whether or not he
will take out a Patent for a particular invention. These considera-
tions will also weigh with the Patentee when coming to any decision
about the disposal of his Patent : as they will affect the decision
also of any man of business who may be considering the acquisi-
tion of a Patent from the holder.
Secrecy.
The advantage to the inventor of his invention is in his being
able by means of the invention to do something or make something,
or do or make something better or more quickly or more cheaply
than other people working without his invention. Therefore if no
one else knows the secret of the invention, every one except the
inventor is lacking this advantage. Therefore the iuventor may
think that the maximum possible advantage will accrue to him
simply if he keeps his invention a secret. But this is to overlook the
practical aspect of the matter. That view might be well enough if
the inventor intended to do the whole manufacturing of the article*
that is to say all over the world, himself, or if he were to be content
to profit only from whatever he could himself manufacture. But 4
moment’s reflection shows that it is very seldom that an inventor is
Cli.IV]
SECRECY IMPRACTICABLE
49
in the best position to be his own manufacturer. If he is not, then
it becomes necessary for him to transfer his secret to a manufacturer*
Without such transfer he can make nothing : neither the article
which is to be the fruit of his invention nor any profit. To effect
any such transfer he must first disclose his invention to the transferee
at least. In practice he will be required to disclose his secret to
other persons besides the transfeiee, and there will be inevitable dis-
cussions. The transferee will wish to discuss the matter with his
technical advisers, or with his partners, or his legal advisers as the
case may be. Any discussion will be futile without full knowledge of
the invention itself. One of the greatest difficulties to be overcome
by the inventor in real life is, after discovering the invention, to
discover the manufacturer and the best man or men to market the
manufactured article : the person who will become the transferee or
licensee. In the natural course of events the person who will be in
the best position to manufacture the invention will be found among
persons who are already manufacturing on a large scale goods of a
similar nature ; since it will be by improvement on such goods that
the profit, if any, is to be made and since these will be the people who
will be in closest commercial touch with the consuming market. It
will only be by advertising the invention among these persons, or at
least after several preliminary discussions with different individuals
among them, that the best person may be found and the best terms*
may be made to enable that person to take up the invention. These
are the very people who in the natural course of events will also be,
if they do not take up the invention, the inventor’s most keen rivals
and most formidable competitors.
Thus it is inevitable, in cases where the inventor is not going
to be his own manufacturer, that he will be required, in the course of
negotiating the manufacture, to disclose his invention to those very
persons who are most likely to be his competitors. There is no
possibility then of his relying on keeping his invention secret in such
cases.
Apart from this again, while he is the owner simply of an
invention unprotected by the Patent Law, it is totally impossible for
the inventor to have any effective commercial or legal dealings with
his invention. Having for the reasons already mentioned, no legal
rights in his invention other than what he may acquire under the
Patent Law Statutes he clearly cannot effect any effective transfer or
7
60
THE LAW OF PATENTS IN INDIA
[Ok. IV
assignment of these. rights under English Law. He does not appear
to be in any better position under Indian Law in this respect. It is
true the Indian Act appears to contemplate the assignment of an
unprotected invention . 1 But in any case the inventor who has
purported to transfer his unprotected invention to one individual
can have no remedy whatever against other persons to whom he has
not transferred it, if they manufacture or imitate it. Clearly the
individual transferee also can then have no remedies against such
other persons. From a commercial standpoint then clearly no
purported assignment at this stage by the inventor of his unprotected
invention is of any business value, since the inventor cannot give the
buyer any general rights worth buying.
In the same way the inventor, as long as he is in the position
of having only the secret of an unprotected invention, is in no
position to be able to arrange any commercially effective licenses or
other terms.
It is obvious then, at least in cases where the inventor is
not going to manufacture the article himself, that secrecy is
in almost every instance for him neither possible nor desirable.
Even in cases where the inventor is his own manufacturer, it
will be found in practice that secrecy for him is seldom if ever
possible or desirable.
The very nature of the majority of articles which can be the
result of an invention, it will be realised, is, in far the greater number
of cases, such that the nature of the invention is at once apparent
from an inspection of the manufactured article. In all such cases
there is no possibility of the inventor keeping his invention secret.
In a very few instances, as where the invention consists of a
method of manufacturing an emulsion or the emulsion itself or other
special chemical methods of preparing some composition, it may be
that not only will the invention not be obvious from a mere cursory
view of the manufactured article, but even chemical analysis and
microscopic examination will not reveal the secret of the invention.
In such case the position will then be this. Let us suppose the
inventor manufactures his product according to a process which he
keeps secret. All the time he is doing this he is dependent on the
integrity of his employees. If one of his employees shall disclose
* See See. 3 of the Act of 1911.
Ch.IV]
DISCLOSURE OFTEN UNAVOIDABLE
51
the secret to one of the inventor's competitors) the inventor will
have no remedy against that competitor if that competitor manufac*
tares the same product according to the precise process which has
till then been the inventor's secret. Also there is nothing to prevent
every competitor from carrying on his own research work and as
soon as one or more such competitors discovers this same proccss 9
which in most instances will be merely a matter of time, there will
be nothing to prevent any one or all of them from manufacturing
under what has been hitherto the original inventor's secret process.
What is more, suppose the same state of things : the original
inventor has been manufacturing some commodity under a secret
process for say, 5 years : a competitor by dint of independent
research discovers the same process. Now suppose this competitor
makes an application for a Patent. What then ? It may be very
doubtful in any particular case whether such previous 5 years manu-
facture in secret will be held to be any bar to the application for
Patent by the new comer. Even if it be so, the original manufac-
turer will need to give full particulars of his secret in order to
make any effective opposition to the grant. If the application for
Patent is refused it can only be on the ground of prior user, or prior
knowledge. This will mean that after the application has been
made and refused, all the world, as well as both the first and second
inventor, will be able to use the same process ; so all advantage to
the original inventor will be gone. If on the other hand the applica-
tion is granted and a Patent issued to the newcomer, the original in-
ventor as long as the Patent remains in force will be completely
ousted ; and neither he nor anyone else except his competitor will
be able to continue manufacture .
Even in a case where the new application for Patent does not
cover precisely the same ground as the hitherto secret invention, it
may become necessary for the original inventor to disclose the whole
of his secret process if he wishes to oppose the grant of that part of
the new application which affects him.
It is practically impossible for him to make any effective
opposition to the new application on the ground of prior user or
prior knowledge without disclosing his secret. The alternative is
that if he continues to keep his secret, he will be helpless to preveut
the new Patent being granted to the new applicant and he will then
be ousted from the fruits of his invention : he will be able to do
52 THE LAW OF PATENTS IN INDIA [ Oh. IV
nothing but watch the new man enjoying and exploiting what might
have been his own monopoly.
Thus even in oases where the inventor will be his own manu-
facturer it is seldom if ever that secrecy, even if attainable, is of any
real or lasting protection to the inventor.
Other than secrecy the only means by which the inventor can
obtain any protection at all for his invention is by obtaining Letters
Patent. It is obvious therefore, though inventors in India do not
appear as yet to have grasped the full importance of this, that
where an Inventor has any new invention which has marketable
value, the only way for him to obtain any protection for his inven-
tion is to take out Letters Patent.
The only question then is what is the value of the invention and
whether it is worth the cost, often slight, of obtaining the requisite
Patent. For this it is necessary to make Borne estimate of the
probable or potential value of the invention as well as some estimate
of the probable expenses of obtaining the Patent.
Commercial value of the Invention and Patent.
The commercial value of the invention together with the Patent
is the crux of the matter to the inventor.
It will be as well for him at an early stage as soon as he has
got his invention completed to collect as much material information
as possible in regard to costs of working, sale price, output and
profits on. the one hand in respect of similar articles in use prior to
his invention ; and on the other hand in respect of the new article
which is proposed to be marketed after embodying his invention.
In this way he may arrive at some definite figures, however approxi-
mate, of an estimated valuation of his invention.
Difference between value of the invention and value of the Patent.
Whatever approximate figure may have been arrived at as re-
presenting an estimate of the valuation of the Invention it must not
by any means be concluded that this same figure represents the true
commercial valuation of any specific Patent which may be obtained
in respeot o&that invention.
The invention and the Patent though connected are two totally
different things 3 . The invention is that which creates the possibility
* An invention in Patent Law is a term ordinarily restricted to an invention as
Ch. IV]
PATENT AS INSURANCE OF PROFITS
53
of commercial profit if the inventor is allowed the seourity of a
monopoly for making that profit from the invention. The Patent is
. that which gives him the security. The invention, however good in
itself, without a Patent may be valueless : for if all the world can
make the product arising out of the invention and compete with the
inventor he may be able to do nothing but sell below his cost price
and be driven out of business. The effect of a bad or ineffective
Patent may be as disastrous as having no Patent at all ; if it fails to
give any protection. In either case though the invention may have
been rightly valued as very profitable at a large figure, the Patent in
respect of that invention may be found to be of much less value or
none at all. On the other hand, if the invention itself has no poten-
tial commercial value, no patent, however effective, which is obtained
for it can increase its value : nor can the Patent in such case be of
any value. Thus an effective Specification and Patent may be viewed
commercially as an effective policy of insurance against loss of
profits. It cannot create profits if none are inherent in the inven-
tion : but it can secure them if they are.
If an invention is valued and a figure of estimated profit calcu-
lated, though nothing can be added to this figure for a Patent which
reaches perfection in its degree of effectiveness, nothing need be
subtracted : the full valuation of the invention can be taken as the
commercial valuation of the patented invention. For the same inven-
tion if a less effective Patent only is obtained, then to arrive at
a valuation of the patented invention a subtraction will require
to be made from the figure taken as the potential value of the
invention. To reduce the matter to business terms an illustration
may be giveD in rupees in this way. Take a small invention of
such a nature that if you have the monopoly of it after it has be-
come widely known in the market it will yield a profit of Rs. 6000/-
per annum. Say it takes 2 years before any profit can be made
and the expenses of putting it on the market can be cleared : and
that in the next 4 years an average profit of Rs. 3000/- per
annum may be made and after that for the next 10 years an average
profit of Rs. 6000/- per annum. Over a period of 16 years those
described and de-limited in a particular Patent specification. Here in this chapter
however the term, is used as referring broadly to the inventor’s idea in the
abstract for his invention prior to any specification being made or independently
of any specification. ‘
THE LAW OF PATENTS IN INDIA
[Oh. IV
54
figures give a total potential profit of Rs. 72,000/-. That is an
estimate only of potential profit. Unless the protection of an effec-
tive Patent can be obtained to give yon your monopoly, there can be
no security that even Re. 1 profit out of that estimated Rs. 72,000/-
will in fact be made. If a Patent is obtained for that invention to
give a watertight monopoly then the value of the patented invention
may be taken at the full figure of Rs. 72,000/-. If the Patent which
is obtained does not give a watertight monopoly, but, while restrict-
ing the sale by competitors of certain articles, leaves the door open
for the sale by competitors of other products differing only slightly
from the inventor’s product ; and if half the persons who would buy
the inventor’s product, if it were alone in the market, buy the com-
peting product instead, then the actual profit will be reduced by half;
and the valuation of the patented invention will be not Rs. 72,000/-
but Rs. 36,000/- at the most. Again if the loss of effectiveness of
the Patent is considered to be greater and the risk of unchecked
competition larger, the valuation of the patented invention may be
more correctly stated at a much smaller figure, possibly Rs. 5,000/-,
as a figure representing the profit to be made before sales become
checked by competition from the sales of substitutes or in other
ways.
Estimated Valuation of the invention.
The following are two alternative methods of valuation.
As stated by Haddan the estimated commercial value of the
invention is “the value of the superior efficacy of the invention over
the best of its competitors, in each instance of its employment,
multiplied by the number of instances of its employment or likely
employment, and the time during which it is likely to have
preeminence”. 1
Or, in other oases, such as where the product is for domestic or
personal use or use where from its nature buyers will pay a price for
it which has no connection with the cost of its production or with
the cost of competing articles, then its estimated selling value less
the cost of its production and distribution, multiplied in the samo
way for output and period of demand.
Risks of interference in the future by new substitutes.
A prophetic estimate of the extent of future competition is
* See Hoddan’e Compendium of Patents and Designs (1931'edition) p. 37,
Gh. IV ]
VALUATION OF A PATENT
B6
necessarily one of the most hazardous elements which go to make up
a valuation of an invention. But an allowance for such competition
must be considered : ever though it may turn out that the chief com-
petition will come from substitutes which were not even in existence
or thought of at the time when the valuation was made. The extent
of this competition may greatly affect the “time during which the
invention is likely to have preeminence’’ in the formula mentioned
above. The true value of an invention for the windows of Hansom
cabs might have been a large figure in the year 1883 but only a small
figure in the year 1913 when hansom cabs were on the verge of being
replaced by Taxis.
-Limits of “the invention” to be valued.
When valuing the invention on the lines suggested above it is
necessary that great caution be shown in one direction. Nothing
must be included for valuation as part of the invention which is not
novel ; since protection can only be obtained for such parts of the
invention as are novel and can constitute the subject matter of a
Patent. Considerations regarding what inventions can and cannot
be patented are further discussed in a subsequent chapter.
Valuation of a Patent.
Enough has been said to show that it is extremely difficult to
calculate any precise valuation for any patented invention ; or to
foresee how much profit may accrue from it. A great deal depends
on circumstances in the future, which it may be extremely difficult
if not impossible to foresee. However, it may be of some assistance
to note here certain features in which different Letters Patent may
be efficient or inefficient in securing the desired monopoly for any
invention. This has nothing to do with the value of the invention
in itself.
Exactitude in describing the nature of the invention.
When a man has made an invention and subsequently obtains
a Patent, nothing is protected by the Patent except the thing or
things claimed by the Specification. The Patent Office has no know-
ledge of any invention that the inventor has actually made beyond
what is described in the Specification. This is the first intimation
received by the Patent Office and the only description with which
it is concerned of the invention. To take an extreme case : if one
machine is invented by an inventor and actually made as a model by
56 THE LAW OP PATENTS IN INDIA fCh. IV
him in the course of perfecting his invention ; if another machine,
though never made, is described in the Specification, it is the machine
in the specification which is protected by a Patent if a patent is gran-
ted. It is natural and inevitable that this must be so : since neither
the Crown granting the Patent, nor its agents in the Patent Office
Department through whom the work in connection with the grant
and registration of the Patent granted is done, nor the other
subjects of the realm who are enjoined by the Patent to refrain from
the use, manufacture and sale of a particular thing, have had any
notice of any invention other than what is described within the
limits of the Specification filed.
It may at first sight seem unlikely that a different invention
should come to be described in the specification to that actually dis-
coved by the inventor. But this is in fact by no means a rare
occurrence. The necessity for careful, accurate and effective draft-
manship in the wording of the Specification at once becomes obvious.
Since the Patent may be valueless if it does not describe the inven-
tion which the inventor wishes to be described, and may lose value
in degrees proportional to its inexactitude, one feature which must
be taken into account in the valuation of the Patent is the accuracy
of the Specification in describing the invention required.
Exactitude in describing the limits of the monopoly.
In addition to accuracy in describing the nature of the inven-
tion, it is also necessary that the Specification should be accurate in
describing the limits of the monopoly claimed. The former is
necessary so that the public may be enabled without doubt or incon-
venience to make the invention after the period of monopoly has
expired. The latter is necessary so that the public and in particular
competitors of the Patentee may be informed without doubt what
they may not make during the period that the monopoly is current.
Inaccuracy of description in either respect may be equally fatal to
the validity of the Patent and equally damaging to its value : since
it may then be found invalid for insufficiency of description.
Freedom from other past patents.
However competent and accurate the draftsman of the Specifica-
tion may be, it is by no means always open to him to claim a Patent
for the whole of what the inventor wishes to olaim as his invention.
The purported invention as described by the inventor must be
Cb.iv]
IMPORTANCE OP THE SPECIFICATION
5 ?
examined in the light of previous Patents to see how muoh of it, if
any, is free from all previous Patents. Also how muoh of it, if any,
is clear of all previous oomrnon or publio knowledge. Similarly
some inventions are of such subject matter as oannot in law be
validly patented. Only that portion of the inventor’s aotual inven-
tion which is clear of these obstacles can be validly Patented. (For
further consideration of these matters see Ch. VI). Normally
where possible all suoh considerations will have been fully gone into
by the draftsman of the Specification before the application for
the Patent will have been filed ; and only a Patent of which the
claims are not too wide will have been applied for and granted.
In this respect also the need for efficient work in drafting the
Specification must be emphasized ; and the manner in which the
degree of efficiency with which such work is done may affect the final
commercial value of the Patent. It must be fully understood by
every inventor and by every person who may be in any way finan-
cially interested in a Patent, that owing to the essential nature of
any Patent system it is quite possible and indeed common for a
Patent to be granted which after grant, in the event of certain steps
being taken, may be found to be partially or even wholly invalid and
ineffectual. The full appreciation of this is fundamentally essential
for the understanding of anything to do with the practical working
of any Patent as well as of the scheme of Patent Law as a whole.
Freedom from interference by future Patents.
What has been discussed up to now is matter which relates to
an investigation of the effectiveness of the Specification, and there-
fore of the Patent, in its purpose of creating a monopoly for the
desired invention which will be watertight as the specification stands
at the time of the application. The considerations for the commercial
valuation of the Patent however do not end there » and the future
also be allowed for.
To take an illustration. Suppose a Patent has been valued on
the basis that in the period of the Patent 10,000 patented articles
will be sold .at a dear profit of Rs. 5 each, making an estimated pro-
fit of Rs. 50,000. These calculations, let us suppose, are made on the
footing that the Patent will create an absolute monopoly for the
article in question and that there is no impinging on this Patent by
any prior Patents or by any prior knowledge. Now suppose that is
8
THE LAW OP PATENTS IN INDIA
t Ch. IV
so and there are in fact no attaoks made on the validity of the
Patent and that it in all respects gives a watertight monopoly for the
article in question. For all that, the hoped for profits will never be
made, if, after the patented article is well established in the market,
some competitor brings out a Patent for something which may be
sufficiently differently constructed to justify a separate Patent yet
successfully replaces the patented article.
Of course if the new competing invention is totally different
from the original one, then no amount of skill and ingenuity will
avail to frustrate the grant of a Patent for the new competing inven-
tion. On the other hand if the Specification for the original Patent is
drawn with foresight and real skill it may be found that by it a
protection may be achieved not only for the precise invention as it
stands at the time of application but for considerable modifications
thereof which may not have been fully envisaged at the time of the
application. In this way the new inventions of competitors at a later
time may be found to be covered by the Specification as well as the
particular article originally put on the market. In this way the field
of new competing patents may be cut down.
Though it is difficult if not impossible to foretell the degree of
danger likely to arise from substitutes, whether patented or unpaten-
ted, being put on the market, yet it is obvious that the degree of
broadness or narrowness of a Patent in this respect is a matter to be
taken into full consideration in arriving at any valuation of such
Patent.
Necessity for expenditure in Connection with Key patents or other
Patents relative to the manufacture in question.
Another matter may here be mentioned. It not infrequently
happens that a Patent may be taken out which is highly valuable but
which cannot be worked except in conjunction with other Patents.
In such case arrangements will have to be made either for the pur-
chase of those other Patents or for obtaining licenses in connection
with them. This will then be an item of expenditure for which
allowance must be made on the debit side in arriving at any valua-
tion of the original Patent.
Allowance for the Contingent nature of the Grant of any Patent.
< : The point cannot be over-emphasised that the Crown, when it
grants a Patent, in no sense guarantees the validity of such Patent.
Ch. IV] UNTIL ATTACKED PATENT STANDS EFFECTIVE
59
It will be seen hereafter that even after grant circumstances may
arise enabling an opponeut of the Patentee in certain contingencies
to obtain the revocation of the Patent : either by instituting, on his
own initiative, revocation procedings, or by taking the plea that the
Patent is in truth invalid by way of defence when the patentee brings
an infringement suit against him. The contingencies in which a
Patent may in this way be held to be invalid even after grant are
considered in another chapter.
Until it is attacked the Patent will stand effective. If there is
considered to be no prospect of any opponent attacking it in this way
after grant the risk of the patent being upset after grant need not be
taken into account in valuing the Patent.
In other cases the risk has to be taken into account before
arriving at a valuation of a patent.
In most cases the risk is small. It may be treated as almost
negligible where a very thorough search has been made for all possi-
ble anticipations and has resulted in a report that the field is clear of
any possibility of the existence of any effective anticipations.
In other cases the risk may be very great : as where no
thorough search has been made concerning the possible existence in
India of previous specifications or of other matters which may after-
wards be relied on by an opponent as ‘having been anticipations
existent at the time of grant and sufficient to invalidate the Patent
in question.
The Patent Office itself makes certain searches prior to the
Patent being granted. In the United Kingdom these searches are,
as is required under the English practice, of a very thorough nature ;
and may therefore be relied on to great extent as showing how far
the field is clear of possible anticipations. In India in practice such
thorough searches cannot at present be made at the Indian Patent
Office ; and the mere fact that no anticipations have been cited as a
result of the Patent Office search should not be relied on as conclu-
sively establishing their non-existence.
For these reasons it is highly advisable, before any attempt is
made to arrive at a practical commercial valuation of any Patent,
that a thorough investigation should first have been made to ascer-
tain to what extent the scope of the claims stated in the Patent may
have been impinged upon by other prior patents or by other matters
60
THE LAW OF PATENTS IN INDIA
[Ch.IV
of prior public or general knowledge and to ascertain in foot what
possible matters of anticipation are in existence. From what has
been said it is seen that if the Patent is otherwise valuable it will' be
advisable for such an investigation and report to be made by an
expert Patent Agent.
After such investigation and report have been completed it will
be necessary to estimate broadly what risk there is of the validity
of the Patent for any reason being at any later date successfully
attacked.
Final commercial value of a patented invention as a whole.
Though it may be impossible to fix any precisely exact figure,
the different considerations disoussed above will be required to be
weighed up both for the value of the invention in itself and for a
view of the effectiveness of the Patent on the basis of its Specifica-
tion in giving the necessary protection ; and finally a rough estimate
may be made of the commercial value of the patented invention as a
whole.
Cash values paid for patented inventions in certain recent
Instances.
Since all transfers of Patents or grants of licenses in respect ,
of Patents require to be entered in the Register of Patents and the
amount of the consideration paid and received in any suoh transac-
tion is also entered in that Register, ample examples may be found
in the Register to show cases where considerable cash values have
been put by the parties concerned on various Patents and high prices
paid.
In many instances where an interest in a Patent is transferred,
only a partial interest is transferred while the remaining part of the
ownership or interest is kept by the holder. In many instances
where Patents are commercially exploited with success the ownership
of the Patent is retained by the holder while a license only is granted
to some other manufacturer or merchant. In such cases the figure
entered in the Register of Patents as the consideration for the tran-
saction represents only a fraction of the amount at which the parties
themselves must have valued the whole patented invention.
In other instances the consideration paid in oash is a merely
nominal figure and can hardly be taken as any real indication of
the true value of the patented invention. Such cases may natu-
Clr. IV]
CASH VALUES PAID FOE PATENTS
61
rally arise where for reasons conneoted with Company Law or
otherwise a legal transfer is necessitated, bat where owing to the
business relationship of the parties there is no need for any payment
in oash of the full actual value of the invention. Nevertheless in
oertain instances a sum in cash representing a sum which may be
taken to have been considered by the purchaser as the full value to
him of the patented invention is not infrequently paid and conse-
quently recorded in the register.
It may be of interest and not out of place here to cite the follow-
ing instances of transfers of patents and of the amounts of the rela-
tive consideration in each instance from among certain cases men-
tioned in the Annual Reports of the Indian Patent Office.
Examples : —
In 1930 : —
(1) A group of 5 patents relating to electric welding was
assigned for a consideration of £ 2,500.
(2) A patent relating to cop-winding frames was assigned
for a consideration of £ 5,000.
(3) A group of 3 patents relating to emulsions was assigned
for a consideration of Rs. 40,000.
(4) A patent relating to rail clip was assigned for a consi-
deration of £ 1,000 plus an annual royalty.
(5) A group of two patents relating to safes was assigned
for a consideration of Rs. 10,000.
In 1931 : —
(1) a patent relating to casting rice bowls, cooking pans,
etc. was assigned for a consideration of Rs. 10,000.
(2) a patent relating to liquid steam levellers, was assigned
for a consideration of Rs. 3,000.
(3) a group of four patents relating to scutching and spin-
ning machines, was assigned for a consideration of
Rs. 2,000 in respect of each patent.
(4) a patent relating to bituminous concrete, was assigned
for a consideration of £ 100.
In 1932 : —
(1) a licence in veBpeot of a group of four patents relating
02 THE LAW OF PATENTS IN INDIA {Ch. IV
to aircraft and aeroplanes was granted to the Secretary
of State for a consideration £ 15,000 ;
(2) a patent relating to telephone systems was assigned for
a consideration of £ 500 ;
(3) a patent relating to rotary looms for textiles was assign-
ed for a consideration of £ 250 ;
(4) a patent relating to cigarette making machines was
assigned for a consideration of £ 225 ;
(5) a group of six patents relating to means for securing
rails to railway sleepers was assigned for a considera-
tion of £ 1,250 ;
(6) a patent relating to a process for preparing insecticides
was assigned for a consideration of $ 500 ;
(7) a patent relating to upholstery pads was assigned for a
consideration of Rs. 1,500 ;
(8) a patent relating to a process of conveying pulverised
meterials, and another relating to hollow blocks for
building construction were assigned for a considera-
tion of £ 100 each ;
(9) an exclusive license in respect of a patent relating to
the production of glass filaments, was granted for a
consideration of £ 100.
In 1933
1. An exclusive license in respect of a patent relating to
‘apparatus for operating railway signals” was granted for a consi-
deration of Rs. 2,000 in addition to royalties.
2. An exclusive license in respect of a patent relating t»
“clarification of water” was granted for a consideration of Rs. 1,000
in addition to royalties.
3. A patent relating to a “device for the prevention of back
fires in gas apparatus” was assigned for a consideration of £ 100.
4. An exclusive license in respect of a group of 3 patents
relating to “painting colours and processes” was granted for a consi-
deration of Rs. 500 in addition to royalties.
[These few examples will be enough to show that patented inven-
Oh. IV]
CASH VALITES ‘PAID EOR PATENTS
63
tions in India can reach high valuation figures and can command
substantial prices.]
Nevertheless the difference between the low values and small
numbers of assignments recorded in India and the high values dealt
in England is very marked. It must be expected that as industrial
development in India increases and as the value of the protection
afforded in India to manufacturers and merchants through the hold-
ing of letters patent becomes more videly recognised, the prices
which good Patents will command on assignment will also greatly
increase.
CHAPTER V.
THE SYSTEM OF ADMINISTRATION OF THE PATENT
LAW IN INDIA— THE PATENT OFFICE— THE FUNC-
TIONS IN THE SYSTEM OF THE CONTROLLER—
AND OF H. E. THE GOVERNOR GENERAL—
AND OF THE COURTS— PATENT AGENTS—
THE COST OF OBTAINING A PATENT.
It will be convenient in this chapter to take a view of the
working of the Patent Office and of the system of administration of
the Patent Law in British India. An appreciation of this institution
and of the system is essential for the application in practice of any
principles of Patent Law which are hereafter discussed. This will
at the same time serve to show the extent of the service which is
furnished to Patentees in particular and to the public in general by
the State through its Patent Office Department ; if they care to avail
themselves of it.
Creation of the Patent Office in British India.
Previous to the 1911 Act, that is to say under the system in
force under the Act of 1888, the position was that there was no
Patent Office proper in India, no Controller of Patents and no such
thing as an Indian Patent properly so called. Protection of a sort
was given under the Act of 1888 for what were termed “exclusive
privileges’ 1 ; but both the method of their grant and of their opera-
tion, as well as the system of recording matters in connection with
these exclusive privileges, were not altogether satisfactory either for
the Inventor or for the public.
It was by the Indian Act of 1911 1 , which was modelled on the
English Statute of 1907, that Indian Patents were created and given
legal effect; and that an Indian Patent Office proper and a Controller
of Patents in British India were appointed.
The Patent Office.
The Patent Office for the whole of British India is situated at
1 For the Objects and Reasons of the Act 1911 which hare been . given in
full for ease of reference, see infra, App. No. 5.
Ch. V]
THE PATENT OFFICE
1 Council House Street, Calcutta. There is a public room attached
to the Patent Office where the Public may ask for and read such of
the books and documents kept at the Patent Office as under the rules
of the Patent Office are available to the Public. As stated in the
current Patent Office Hand book the office hours during which the
Patent office and its public room are open are from 11 a.m. to
4 p.m. on all days except Saturdays, Sundays and Government
holidays ; and from 11 a.m. to 1 p.m. on Saturdays.
Publications issued by and kept at the Patent Office.
The following publications are issued by the Patent Office as
stated in the Patent Office Handbook 2 : —
(i) The Patent Office Handbook.
(ii) Gazette of India, Weekly Notifications of the Patent
Office.
(iii) The Patent Office Journals.
(iv) Inventions (Consolidated Subject-Matter index, Name
index and Chronological lists)
(v) Specifications of Inventions.
(vi) Annual reports on the working of the Patent Office.
The Patent Office Handbook contains in Part I the full text of
the current Acts and Rules affecting Patents, including the Indian
Patents & Designs Act of 1911 as amended, the Indian Patents and
Designs Rules 1933, the Indian Secret Patents Rules 1933 and the
Special Patent Rules promulgated by the Government of India in
1912 for the Military and Marine Services : and in Part II various
useful information for the guidance of inventors and others in
regard to Patents in general and various matters connected with
Applications and Specifications, the preparation of Drawings, Sear-
ches at the Patent Office and various other proceedings.
The publications in the Gazette of India published as the
Weekly Notifications of the Patent Office are described as follows : —
“The Weekly Notifications contain lists of applications for
Patents made and accepted weekly, giving the names of the. appli-
cants and titles of the inventions together with brief summaries indi-
cating the nature of inventions in respect of the accepted applica-
tions. The Notifications also show whether patents are due for
9 Patent Office Handbook (5 th Edn.) p. 147.
9
86 THE LAW OP PATENTS IN INDIA [Oh. V
sealing or have been sealed or have been continued in force or have
lapsed ; in addition they inolude notifications of other matters of
current interests in respeot of patents and designs. A name index
of the applicants and provisional subject matter index of the inven-
tions, so far as they can be ascertained from the titles given in the
applications for patents, are included in the Notifications at the end
of each quarter.”
Of the Patent Office Journals it is said : — “The Patent Office
Journals are published annually. The quarterly issues which were
published for some time have been discontinued now. The essential
part of the information given in the Weekly Notifications is conden-
sed in the Annual Journals, which contain inter alia —
(a) A Chronological list of applications for patents made
during the previous two years :
The Chronological list contains, the serial number of the
applications, the names of applicants the titles of the
inventions, information regarding priority dates, the
progress of the application, and a brief statement of
the subject-matter of those inventions in respect of
which the specifications are open to public inspection.
(b) A list of applications which have become void, on account
of the applications not being accepted within the
prescribed time and of applications on which patents
have not been sealed within the prescribed time ;
(c) A list of special proceedings under the Indian Patents
and Designs Act taken during the previous year ;
(d) A list of patents in force on the 31st December of the
previous year ;
(e) A subject-matter index of the applications given in the
chronological list
(f) A name index of the applicants for patents included in
the chronological list.”
“The annual Journals were printed in this form only from 1905
onwards. Before that year there were a number of printed indexes
extending back to 1859, containing merely an alphabetical index of
the applications and specifications filed during eaoh year. Most of
these indexes are out of print, but may be seen at the Patent Office.
CM. V] SPECIFICATIONS OPEN TO PUBLIC INSPECTION 67
For Patents from 1856 to 1888 recourse should be had to the Regis*
ters kept under the Acts then in force.”
The details of the different lists comprising the “Inventions
Consolidated Subject-Matter Index, Name Index and Chronological
Lists” which have been compiled are given thus : —
“(a) Consolidated list of patents granted by the Government
of India from 1859 to 1874 inclusive, arranged alpha-
betically according to the names of the inventors and
the subject-matter of the inventions ;
(b) Consolidated subject-matter index from 1900-1908.
(c) Consolidated Name index from 1900-1911 and Chronolo-
gical list from 1900-1904 ;
(d) Consolidated subject-matter index from 1900-1911 and
chronological lists from 1905-1911 ; and
(e) Consolidated subject-matter and Name Indexes from
1912-1920 and Chronological list of application from
1912-1920.
These Consolidated Lists contain all the useful information con-
tained in the Annual Journals for the period covered by them, and
are more convenient than the Journals for purposes of search.”
Particulars of the Specifications of Inventions arc stated as
follows : — “Specifications which are open to public inspection under
the Indian Patents and Designs Act, 1911 have been printed since
the 1st January 1912. Specifications of inventions which have been
notified in the Gazette of India, as filed under the provisions of the
Inventions and Designs, Act (V of 1888), are not printed, but copies
may be inspected on payment of a fee of one rupee in respect of each
specification af the Patent Office, 1, Council House Street, Calcutta,
the Record Office, Egmore, Madras, the Record Office, Bombay, the
Office of the Chief Secretary, Home and Political Departments,
Government of Burma, Rangoon, and the Office of the Director of
Industries, United Provinces, Cawnpore.”
The Annual Reports of the working of the Patent Office contain
usually the following information : details of the personnel and orga-
nisation of the staff of the Patent Office during the year : a summary
of the numbers of Patent Applications made during the year with
comparative comments and remarks as to the direction of the trend
THE LAW OF PATENTS IN INDIA
[Cb. V
of inventions daring the year: a summary of other miscellaneous pro-
ceedings decided or effected by the Controller and the Patent Office
in general : general remarks as to other matters which came up for
consideration during the year : and figures giving the total income
and total expenditure of the Patent Office during the year : also
finally, in the Appendices, various interesting statistics showing an
analysis of the origin of applications received giving the numbers
from different countries and from different provinces and the num-
bers emanating from Indians, non-Indian residents in India and from
persons outside India, also a table showing the total number of
Patents applied for and sealed yearly, and the number kept in force in
the year under review by payment of renewal fees and subsisting as
effective ; also details of Patents prolonged. The report also contains
a very complete analysis of the Patent fees received which (together
with Designs fees) amount to the figure representing the total income
of the Patent Office.
Inspection of publications.
The above publications may be inspected free of charge at the
Patent Office. They may also be inspected free of charge at the
following places which are referred to in the Patent Office Handbook
as “Inspection Centres” : viz : —
Bangalore
... Indian Institute of Science.
H • • •
... Industrial Museum in the
Office of the Director of
Industries and Commerce
in Mysore.
Baroda
Department of Commerce
and Industries.
Berlin
. . . The Patent Office.
Bombay
. . . Record Office.
It
... Victoria Jubilee Technical
Institute, Byculla.
Calcutta
... Library attached to the
Office of the Director of
Industries, Bengal, 40/1A,
Free School Street.
Qawnpore
... Office of the Director of
Ch. V]
INSPECTION CENTRES
Industries, United Pro-
vinces.
Dacca ... ... Sadar Registration Office.
Delhi ... ... Office of the Industrial
Surveyor.
Lahore ... ... Punjab Public Library.
London ... ••• The Patent Office, 25
Southampton! Buildings,
London, W. C.
Lucknow ... ... Amiruddaula Public Lib-
rary.
Madras ... ... Record Office, Egmore.
„ ... ... College of Engineering.
Patna ... ... Office of the Director of
Industries, Bihar &
Orissa.
Poona ... ... Lord Rcay Industrial
Museum, Reay Market
Tower, Shukrawarpeth.
Rangoon ... ... Office of the Chief Secretary
Home and Political Dept.
Government of Burma.
Washington (U. S. A.) ... The Patent Office.
Those of the above publications other than ‘the printed specifi-
cations may also be inspected free of charges at the Imperial
Library in Calcutta, or in London at the Office of the High Commi-
ssioner for India, India House, Aldwych, London, W. C. 2.
Purchase of publications.
The publications of the Patent Office, including printed specifi-
cations, may be purchased from the Central Book Depot of the
Government of India, 8, Hastings Street, Calcutta ; or from the
Manager of Publications, Old Press Buildings, Civil Lines, Delhi ; or
(except as to printed specifications) from the office of the High Com-
missioner for India, India House, Aldwych, London, W. C. 2.
THE LAW OF PATENTS IN INDIA
[<a. v
TO
Additional publications available at the Patent Office.
The following publications in addition to those abovementioned
are kept available for inspection on request by members of the publio
at the Patent Office Library in Calcutta.
(i) Copies of all publications issued by the United Kingdom
Patent Office. These include among other things,
copies of full Specifications for Patents granted in the
United Kingdom.
(ii) Copies of the Journals issued by the Australian Patent
Office.
(iii) Copies of the Weekly Gazettes issued by the United
States Patent Office (Abridgements.)
Registration.
One of the most important requisites of any Patent adminis-
tration in any country is that there must be an effective central
system of registration. The Patent Office (in Calcutta) is the regis-
tration centre for all India. Under Sections 20 & 33 of the Act of
1911 it is provided that a Register of Patents shall be kept at the
Patent Office. In this register are to be entered in effect the
following : —
(i) Name and addresses of patentees.
(ii) Particulars of assignments and transfers of patent.
(iii) Particulars of licenses granted.
(iv) Particulars of amendments, extensions and revocations.
(v) Also particulars of mortgages if the mortgagees so desire
(See Section 64.)
(vi) Copies of any decrees and orders made by the Court
under Section 29 or under Section 26, that is to say in
suits for infringement or in suits for revocation.
Section 64 provides for entries being made in the register on
the application of assignees, mortgagees or licensees or persons
otherwise entitled to any interest in a patent.
It is also provided by Section 20 that the register of patents
shall be prima facie evidence of any matters directed or authorised
under the Act to be inserted in the register.
As an indication of the volume of work entailed by suoh regis-
tration it may be mentioned that aocording to the Annual Report of
Ch. V] POWERS & DUTIES OF CONTROLLER 71
the Patent Offioe in India for the year ending 31st December 1933
there were in that year 4,292 entries made in the Register of Patents.
Powers and duties of the Controller.
For a view of the extent of the powers and duties of the
Controller it is proposed to consider these first in connection with
the grant of a Patent following the sequence of proceedings which
may arise in respect of an application for a Patent chronologically,
and then in connection with other matters seriatim.
Powers and duties of the Controller In connection with the grant
of a Patent.
The total number of Applications filed at the Indian Patent
Office in the year 1934 was 1,006 inclusive of reciprocity applications
and of applications for Patents of Addition. This figure is sufficient
to show the weight and importance of the work which passes through
the Indian Patent Office. At the same time for purposes of compari
son it may be of interest to note that the total number of Applications
for English Patents filed at the United Kingdom Patent Office in
the year 1934 was 37,408. 3
(i) Application for grant : — The Controller receives all
applications 2 for the grant of a Patent. Where necessary he may
call for further particulars, for identification or for proof that the
applicant is such legal representative or assign as he may state him-
self to be, or for drawings or models or samples.
As to this sec Sections 3 & 4 of the Act. Also Rule 3 : direct-
ing that the application may be sent by hand or by post addressed
to the Controller.
(ii) Examination of the application by the Controller : — On
receipt of an application the Controller is bound to make an exami-
nation thereof in terms of Section 5 of the Act. The topics to
which he is required at this stage to direct his attention are in effect
the following : —
(a) The sufficiency of the title of the application. (Section
5 (1) (c).)
•See the fifty-second Report of the Comptroller-General of Patents, Designs,
and Trade-Marks for the year 1934.
♦As to the forms prescribed for applications see Forms Nos 1, 1A, IB, 1C..
1AO, ZBC, ICQ 2, 2A, 2C & 2 AO infra.
72
THE LAW OP PATENTS IN INDIA
[Ch. V
(b) Proper compliance with the regulations for the prepara-
tion of the application, specification and drawings.
(See sub-section (b))
(c) Fair description of the invention (See sub-section (a)).
(d) Sufficiency of the definition of the invention (See sub-
section (d))
(e) That the Specification only relates to one invention.
(See sub-section (f).)
(f) Novelty. (See see-section (e).)
If the application does not fulfil the requirements referred to
in Section 5, the Controller may at this stage either refuse to accept
the application or require amendments. The Controller has also a
general power under Section 69 to refuse to grant a patent of which
the use would, in his opinion, be contrary to law or morality.
(iii) Notice of the decision of the Controller to accept any
application ; or to refuse to accept it ; or to require its amendment : —
As already indicated the Controller’s decision is required to be given
on the application at this stage. The normal period ordinarily taken
for the investigations required and for the design to be given may
be reckoned in usual practice to be about three months reckoned
from the time of submitting the application, when the decision is to
accept the application. Notice of such acceptance is required to be
given by the Controller to the applicant.
(iv) Advertisement of acceptance of the application'. — Such
acceptance is then required to be advertised : under Section 6 of the
Act. (Section 6 provides that the application and specification with
the drawings (if any) shall (after that) be open to public inspection-
The practice is that the specification and drawings are printed and
od sale at one rupee per copy about six weeks later.
In the absence of opposition — then sealing and grant : — If no
notices of opposition are received within the period allowed, all
further opposition at this stage is precluded. Then the Controller
will proceed to seal and grant the Patent. (As to this see further
remarks below.)
In the event on the other hand of opposition then the following
steps become necessary.
(v) Notices of opposition to the grant ' The Controller receives
73
Oh. V] PROCEDURE ON OPPOSITION
all notices of opposition to the grant of any Patent. After the date
of the advertisement of the acceptance of an application, a period
of four months is allowed during which anyone may on the grounds
mentioned in Section 9 of the Act, but on no other ground, give
notice that he wishes to oppose the grant of the proposed Patent.
The nature of the grounds on which such opposition at this stage
may be made and a comparison of the corresponding provisions of
the English Acts of 1907 — 1932 is more fully discussed in another
Chapter.
Where such notice of opposition is received at the Patent
Office the Controller is required to give notice thereof to the appli-
cant. (See Section 9(2) and Rule 20 and Form No. 6).
(vi) Adjudication of the Controller on opposition to the Grant :
— On the expiration of the four months already mentioned in the ev-
ent of any opposition to the grant the Controller is required to make
a decision on the matter. For this purpose he will if so desired hear
both the applicant and the opponent. Under Section 65 of the Act
the Controller is given the powers of a Civil Court for the purpose
of receiving evidence and administering oath and enforcing the
attendance of witnesses and compelling the production of documents
and awarding costs. It is therefore open to the Controller if the
parties do not wish to be heard to decide the matter on the written
documents. Or, if the parties wish to be heard, or if the Controller
so desires, the matter will be decided before the Controller in all
respects like a Civil Suit in a court of law. The procedure regard-
ing his adjudication is that laid down under Rules 20, 21 and 22.
If the Controller decides in favour of the opponent, he will then and
there refuse the grant. No advertisement or further proceedings
will then be required.
(vii) Sealing of the Patent : — If the Controller decides in
favour of the applicant for grant, then the Controller proceeds in
due course to cause the patent to be sealed (See section 10). Since
it is provided under Section 10 of the Act that the patent shall be
granted subject to such conditions (if any) as the Governor General
in Council thinks expedient, it will be required of the Controller
formally to submit the matter to the Governor General before the
Patent is sealed.
10
74
THE LAW OF PATENTS IN INDIA
[Ch. V
Patent of addition.
The procedure in connection with an application for a patent
of addition which is authorised to bo granted in accordance with
Section 15A of the Act of 1911, is in practice similar to the proce-
dure in connection with any fresh Patent.
Powers and duties of the Controller in connection with the restora-
tion of Patents.
It is provided by Section 16 of the Act that, where any patent
has ceased owing to the failure of the Patentee to pay any prescribed
fee within the prescribed time, the Patentee may apply to the
Controller for an order for the restoration of the
Patent
The Controller accordingly receives all such applications for
restoration.
On receipt of such an application the Controller is required to
examine it to ascertain that the omission to pay the fee was uninten-
tional or unavoidable and that no undue delay has occurred in the
making of the application. It would appear that the Controller is
not given power under the Act to entertain or allow any such
application when the omission to pay the fee was intentional and
avoidable and where there has been undue delay. But this may be
a matter for construction of the meaning of the section if the point
should arise. The section makes no provision for such eventuality :
but merely directs advertisement and the procedure in proper cases.
The section does not expressly give the Controller power to reject
an application without advertisement in cases where the omission
to pay the fee is intentional and/or avoidable or where there has
been undue delay, but it may be supposed that this is the effect of
the section. In a proper case the Controller is then required to
advertise the application in the Gazette of India (See section 16(3)
and Rule 2.6.)
After the date of the advertisement a period of six weeks is
allowed during which any person may give notice that he wishes to
oppose the restoration of the lapsed Patent. (See Rule 27.) Where
such notice of opposition is received, the Controller is required to
make a decision on the matter. The procedure regarding his ad-
judication is governed ( in the same way as the procedure of opposi-
Ch. V] AMENDMENT OF PATENTS 75
tion to a grant of a Patent ) by Section 65 and by Rules 20, 21
and 22.
The Controller will then make an order either dismissing the
application made for restoration or restoring the Patent uncondi-
tionally or if ho deems it advisable, restoring the Patent subject to
conditions or restrictions. (See section 16.)
Powers and duties of the Controller as to amendment of Patents.
In any case, except in cases when any suit or proceeding for
infringement or for revocation of the Patent is pending before a
Court, it is always open for the applicant for or holder of a Patent
to apply to the Controller for amendment of his application or speci-
fication as the case may be. Except where litigation is pending as
mentioned, any application for such amendment is to be made to the
Controller ; and no one else has power to order the amendment.
In cases where the application for amendment is made before
the application for Patent has been accepted, no notice of the appli-
cation for amendment is required to be given by the Controller to
anyone : no formalities are necessary : the Controller simply decides
ex parte on the application for amendment whether and subject to
what conditions (if any) the amendment shall be allowed.
In other cases where the application for amendment is made
at any time after the application for Patent has been accepted proce-
dure with advertisement and notice, similar to that procedure already
mentioned, is prescribed. On receipt of the application for amend-
ment, the Controller is required to advertiso by notifications the
request and the nature of the proposed amendment in the Gazette of
India. The Controller may also direct the applicant to advertiso his
application under rule 45 in which event the applicant must so
advertise in not less than two newspapers published in British India.
The Controller is also required (under Rule 20) to give notice of the
application for amendment to all persons whose names are entered
at the time of the request on the Register as claiming an interest in
the Patent.
After the date of the advertisement three months are allowed in
which any person may give notice that he wishes to oppose the
amendment. The Controller receives any such notice of opposition.
On receiving it the Controller is required to give notice of the oppo-
sition to the person applying for the amendment.
76 THE LAW OF PATENTS IN INDIA [Oh. V
After the expiry of the three months mentioned the Controller
is required to adjudicate on the matter. The procedure for this is
regulated in the same way as for other proceedings before the Con-
troller which have been previously referred to and is governed by
Rules 20, 21 & 22. (See also Rule 23 and section 95) It is for the
Controller to decide in all such oases whether the amendment
requested is to be allowed or refused.
Hearing.
It will be observed that in respect of all three of the above-
mentioned instances, that is, in opposition proceedings under Section
9, in restoration procedings under Section 16 and in amendment
proceedings under Section 17 as is provided by rules 20, 27 and 31
respectively, the Controller will hear the case > and the procedure of
such hearing will be that regulated by Rules 20, 21 and 22.
Powers and duties of Adjudication and decision in other instances.
In addition to the three instances above referred to the Con-
troller has powers on certain other occasions to adjudicate and come
to a decision on questions affecting the parties. Thus under Section
5(2) he has the power and duty to decide whether he will accept or
refuse the applicant’s application and specification at that stage ;
under Section 10(1A) he has certain powers and duties to come to a
decision on certain questions as to whether the grant shall be made
jointly or not • under Section 24 he has powers to allow the surrender
of a patent ; and under Section 69(1) he has power to refuse to grant
a patent of which the use would, in his opinion, be contrary to law or
morality. It is to be noted that by Section 67 of the Act of 1911 it is
provided as follows : —
“67. Where any discretionary power is by or under
this Act given to the controller, he shall not exercise that
power adversely to the applicant for a patent, or for amend-
ment of an application or of a specification, or for registra-
tion of a design, without (if so required within the pres-
cribed time by the applicant) giving the applicant an
opportunity of being heard.”
By Rule 64 it is also provided as follows : —
“64. The time within which a person entitled under
Section 67 of the Act to an opportunity of being heard
shall exercise his option of requiring to be heard shall be
Ch. V] CONTROLLER’S POWERS IN OTHER INSTANCES 77
one month from the date of a notice which the Controller
shall give to such person or his agent before determining
the matter with reference to which such person is entitled
to be heard. If within that month such person or his agent
requires to be heard, the Controller shall appoint a date for
the hearing and shall give ten days’ notice thereof.
Provided that if the giving of ten days’ notice would
cause an application for a patent or for the registration of
a design to become void before the hearing the Controller
may curtail the period of notice.”
It would seem that this section read in conjunction with this Rule
may be treated as applicable to cases where the Controller comes to a
decision in the instances abovementioned. There is no precise proce-
dure laid down under the Act or the Rules for the conduct of the
hearing of the matter, if there is to be a hearing, in such cases.
Rules 20, 21 & 22 are nowhere made applicable as regulating the
procedure for a hearing in such cases. It would seem that there is
nothing to prevent the Controller following a procedure as nearly
similar as feasible in the circumstances to that provided by Rules
20, 21 & 22 in such cases if a hearing is necessitated. It would
seem, equally, that there is nothing to prevent the Controller, provided
he complies with Rule 64, in such cases from adopting a less lengthy
and more summary procedure in arriving at his decision. In this
respect the power given to the Controller under Rule 65 may be
noted, by which he is enabled to call for a statement or explanations.
Rule 65 reads as follows : —
“65. Whether an applicant or agent desires to be
heard or not, the Controller may at any time require him to
submit a statement in writing within a time to be notified
by the Controller, or to attend before him and make
explanations with respect to such matters as the Controller
may require.”
Powers and duties of the Controller on applications for surrender
of Patents.
Seotion 24 of the Act is as follaws : —
“24. A patentee may at any time, by giving notice in
the prescribed manner to the Controller, offer to surrender
his patent, and the Controller may, if after giving notice of
78
THE LAW OF PATENTS IN INDIA
[Ch. V
the offer and hearing all parties who desire to be heard he
thinks fit, accept the offer, and thereupon make an order
for the revocation of the patent.”
All offers to surrender a patent are to be made to the Controller. It
is not precisely laid down what notice the Controller is to give, or
to whom, but it may be supposed that in any case where there is any
possibility of objection, the application will be advertised. He will
then either dismiss the application or make an order for revocation
of the Patent.
Ministerial duties in connection with adjudication and decisions by
the Court or by H. E. the Governor General in Council.
In addition to the powers and duties already indicated the
Controller has also certain duties which may be regarded rather as
administrative and ministerial than judicial in connection with the
procedure for securing a decision on certain other questions which, if
they arise, are required under the Act to be decided by author ties
other than the Controller himself. Thus in the case of an application
for a compulsory license or revocation under Section 22 (on the
ground that the demand for a patented article is not being properly
met in British India) the decision is required to be given by H. E. the
Governor General in Council ; similarly in the cases of an application
for the extension of the term of a patent, the petition is under Section
15 of the Act to be made to H. E. the Governor General in Council
himself or referred by him to a High Court for decision ; so also in
the case of the disposal of appeals from decisions of the Controller
where such right of appeal is granted under the Act, the decision is
required to be given by H. E. the Governor General in Council (see
Section 70) ; but in such cases in accordance with the provisions of
the Act and the Rules various preliminary steps of procedure are
carried out by or through the Controller.
Miscellaneous other powers and duties of the Controller —
The Controller also has various other powers and duties in
addition to those already enumerated. These may here be briefly
mentioned.
Clerical errors.
It is provided by section 62 of the Act that the Controller
may, on request in writing, correct any clerical error in or in con-
nection with an application for a Patent or any Specification.
Ch. VJ JUDICIAL POWERS OF CONTROLLER 79
Rectification of the Register.
On the application of any person aggrieved, the Controller
may make orders for making, expunging or varying entries in the
register and for its rectification. The powers he has in this respect
he derives from section 64 of the Act. That section also gives the
Controller power, in any proceeding under that section, to decide
“any question that it may be necessary or expedient to decide in con*
ncction with the rectification of a register.” He cannot however go
beyond “correcting a mistake of fact which is apparent from a
reference to the Patent itself or to some order of a competent
authority” : as will be noted from sub-section 5.
Certificate of entries and certified copies.
The Controller may on request grant certificates of entries and
events : under Section 71 and Rule 63. As provided by Section 71
such certificates are “prima facie evidence of the entry having been
made and of the contents thereof and of the matter or thing having
been done or left undone.” Requests for such certificates may be
made under Form 29.
Secret Patents.
The Controller has also certain duties in regard to the scaling
and keeping in his custody of closed packets in connection with
secret inventions in accordance with the provisions of Section 21A
of the Act of 1911.
Nature of the powers and duties of the Controller.
From what has already been stated, it becomes apparent that
the Controller under the Act in certain respects exercises judicial
powers of a wide character and in doing so adjudicates on matters
of very considerable importance acting as a judicial tribunal, while
in other respects he exercises executive or ministerial fu notions of
an entirely non-judicial nature.
Extent of Judicial powers of the Controller.
In connection with proceedings in which the decision of the
Controller as a judicial tribunal is sought, questions may arise as to
the precise extent of his judicial powers. In this respect it is to be
noted that it is expressly provided, by Section 65 of the Act of 1911
that in any proceedings before him the Controller shall , have the
80 THE LAW OP PATENTS IN INDIA [Ch.V
powers of a Civil Court. The precise wording of that Section is as
follows : —
“65. Subject to any rules in this behalf, the Control*
lerin any proceedings before him under this Act Bhall have
the powers of a Civil Court for the purpose of receiving
evidence and administering oaths and enforcing the
attendance of witnesses and compelling the production of
documents and awarding costs/'
It has been the common practice for the Controller to issue
subpoenas requiring the attendance of witnesses under the powers
given him under the section. And in a recent case 6 it was decid-
ed by the Calcutta High Court on Appeal that “the Controller
must issue subpoenas if asked for by either of the parties in
order to enable them to enforce the attendance of any of the wit-
nesses whose evidence they desire to place before the Controller.
His position is the same as that of any Judge under the provisions
of Order 16, r. 1 of the Code of Civil Procedure.” The Court held
in effect that a party to opposition proceedings had a right to have
such a subpoena issued on request.
It has been held in a certain case by the Controller that he
had not power to issue a commission for the examination of witnesses
abroad. The decision, which is not reported, was given in the course
of the opposition proceedings to which reference is made in the last
mentioned case, these being heard before the Controller by him in
the year 1934 ; the applicant for patent was Dorman Long & Co. Ltd.
and the opponent J. C. Mahindra. In the course of these proceed-
ings the applicant having made an application for a commission to
England for the examination of certain witnesses, the question was
referred under the provisions of section 68 by the Controller to the
Governor-General in Council and a ruling was obtained to the above
effect.
There is no provision in India similar to Section 77 of the
English Aot of 1907-1932 providing for evidence before the Con-
troller to be in the form of statutory declarations or affidavits. The
Controller’s practice in regard to the taking of evidence at a hearing
of a matter (such as opposition proceedings) is to hear oral evidenoe
of suoh witnesses as the parties may desire to call and to dispose of
* See Dorman Long <b Co. v« Jagadish Chandra Mahindra (1935)
39 C. W. N. 573 at p. 579. .
Ch/V]
PRINCIPLES OF NATURAL JUSTICE
81
the matter generally speaking on the lines of a suit in a oivil court.
It has been held in a recent case decided in the Calcutta High Court
that while the Code of Civil Procedure is not applicable to proceed-
ings before the Controller, the principles underlying the Code in so
far as they are principles of natural justice must of course be obser-
ved by him, as they must be observed by all authorities exercising
judicial or quasi-judicial functions. 6
It has been further decided in effect in the other recent case
(above mentioned) in the Calcutta High Court, on appeal, that the
hearing referred to in Section 9 (that is the hearing in respect of oppo-
sition proceedings) means the hearing of the party and his witnesses
and of the opponent and his witnesses. It was held by the Court
in that case as follows : — “In my opinion the words “after hearing
the applicant and the opponent” in Sec. 9 cannot be read as meaning
that the Controller need only hear the applicant and the opponent,
and can refuse to hear any evidence which either or both wish to
adduce. “Hearing” means “the hearing of the party and his
evidence.” If it were to be held that Section 9 means that the
Controller need hear only the applicant and his opponent there
would be no obligation for him to hear evidence even by affidavit. It
has not been suggested that the Controller’s discretion is such that
he may, if he chooses, refuse even to accept evidence upon affidavit.
I can sec, therefore, no reason for restricting his obligation to that
of hearing the parties and of considering such affidavits as they may
file. It must extend to the evidence of witnesses if the party chooses
to call them.” 7
It is thus clear, it is submitted, that under the present Act &
Rules in India it is obligatory for the Controller to decide such
matters for which a hearing is necessitated on oral evidence if the
parties so desire and to hear all such witnesses as each party may
choose to call.
Under Section 74A the Controller is directly given power to
require security for costs from opponents or appellants who neither
reside in nor carry on business in British India.
8 See In re National Carbon Co. Inc. Patent, and Bright Star Battery Co.
(1934) 38. C. W. N. 729 at p. 736.
J See Dorman Long & Co. Ltd. v. J.C. Mahindra and another, 1935 C.W.N.
573 at 578.
11
82 THE LAW OF PATENTS IN INDIA ECU. T
Extent of the obligations In regard to the performance of his
statutory daties.
Questions may also arise in regard to tho executive side of the
administration of the Patent Offce in connection with the perfor-
mance by the Controller of the Statutory duties of his office as to
the extent of his obligations to perform suoh duties : that is to say
how far the exercise of any given power is discretionary and how
far obligatory.
It has been held in oertain casos in regard to the construction
of similar Statutes in general that where the language of the Act
giving the power is merely permissive in form this is not necessarily
conclusive ; and that, for example, where the word “may” is used in
the passage conferring the power, nevertheless the result on a proper
construction of a particular Act may be in certain ciroumstanoes
that the exercise of such power is obligatory and not discretionary.
The question will be a matter of construction of the particular
passage of the particular act in every case. In a leading English
case ( Julius v. Lord Bishop of Oxford ) 8 the principle was stated as
being that "the enabling words are construed as compulsory when-
ever the object of the power is to effectuate a legal right.” In that
case it was said by Earl Cairns L. C. — “The question has been
argued and has been spoken of by some of the learned Judges in the
Courts below as if the words “it shall be lawful” might have a
different meaning, and might be differently interpreted in different
statutes, or in different parts of the same statute. I oannot think
that this is correct. The words “it shall be lawful” are not equivocal.
They are plain and unambiguous. They are words merely making
that legal and possible which there would otherwise be no right or
authority to do. They confer a faculty or power, and they do not
of themselves do more than confer a faculty or power. But there
may be something in the nature of the thing empowered to be done,
something in the object for which it is to be done, something in the
conditions under which it is to be done, something in the title of the
person or persons for whose benefit the power is to be exercised,
which may couple the power with a duty, and make it the duty of
the person in whom the power is reposed, to exercise that power
when called upon to do so. Whether the power is one coupled with
* (1870) 4 Q. B. D. 245, and (1879) 4 Q. B. D. 525 (0. A.), and (1880) 5 A. C.
214 (H. L.).
Ch. V ]
THE PATENT OFFICE
a duty such as I have deseribed is a question which, according to
our system of law, speaking generally, falls to the Court of Queen's
Bench to decide, on an application for a mandamus* And the words
4l it shall be lawful" being according to their natural meaning per-
missive or enabling words only, it lies upon those, as it seems to
me, who contend that an obligation exists to exercise this power, to
shew in the circumstances of the case something which, according
to the principles I have mentioned, creates this obligation.
I think that if these principles are kept in mind it will be
found that all the cases on this subject are easily understood and
reconciled." 9
Observations were made to the same effect by other members
of the House of Lords in the same case ; in particular by Lord
Selborne as follows : — “My Lords, the use of inexact language in the
statement of reasons for judicial decisions, (though nothing may turn
upon it in particular cases determined upon sound principles) is
sometimes liable to become a starting point in other cases towards
erroneous conclusions. This appears to me to have happened in the
Court of first instance in the present case. The language, (certainly
found in authorities entitled to very high respect) which speaks of
the words “it shall be lawful", and the like, when used in public
statutes, as ambiguous, and susceptible (according to certain rules of
construction) of a discretionary or an obligatory sense, is in my
opinion inaccurate. I agree with my noble and learned friends who
have preceded me, that the meaning of such words is the same, whe-
ther there is or is not a duty or obligation to use the power which
they confer. They are potential, and never (in themselves) signifi-
cant of any obligation. The question whether a Judge or a public
offioer, to whom a power is given by such words, is bound to use it
upon any particular occasion, or in any particular manner must be
solved aliunde, and in general, it is to be solved from the context,
from the particular provisions, or from the general scope and objects
of the enactment conferring the power." 10
Also by Lord Blackburn 11 : — *1 do not think the words “it
shall be lawful" are in themselves ambiguous at all. They are apt
* J ulius v. Lord Bishop of Oxford.
10 (1880) 5 A. 0. 214 (H. of L.) at p. 222.
11 Ibid at p. 235.
84
THE LAW OF PATENTS IN INDIA
[Ch. V
words to express that a power is given ; and as, prima facie, the
donee of a power may either exercise it or leave it nnnsed, it is not
inaccurate to say that, prima facie, they are equivalent to Baying that
the donee may do it ; but if the object for which the power is con-
ferred is for the purpose of enforcing a right, there may be a duty
cast on the donee of the power, to exercise it for the benefit of those
who have that right, when required on their behalf. Where there is
such a duty, it is not inaccurate to say that the words conferring the
power are equivalent to saying that the donee must exercise it.” And
again in another passage when commenting on a dictum in another
case as follows : — *‘In Reg. v. Tithe Commissioners, Justice Coleride,
in delivering the considered judgement (14 Q,. B. 474) of the Court
says : — “The words undoubtedly are only empowering ; but it has
been so often decided as to have become an axiom that in public
statutes words only directory, permissory, or enabling, may have a
compulsory force where the thing to be done is for the public benefit
or in advacement of public Justice.” The only part of this to which
exception can be taken is the use of the word “public” ; if by that it
is to be understood either that enabling words are always compulsory
where the public are concerned, or are never compulsory except
where the public are concerned, I do not think either was meant.
The enabling words are construed, as compulsory whenever the
object of the power is to effectuate a legal right.” 1 *
It is submitted therefore in regard to the exercise of such
powers as are given to the Controller under the Indian Patents &
Designs Act 1911 which are of a ministerial nature, on a correct
construction of the Act there may be an obligation existing on the
Controller to exercise such powers in a proper case, even where the
wording conferring the power in question is grammatically on the
face of it merely permissive in character. At the same time in
regard to such matters in which questions of a judicial nature arise
to be decided and the Controller is given a discretion it will always
be open to him to decide the matter one way or the other in accord-
ance with his discretion.
As to the proper remedies open, should the rare necessity arise,
to a person desiring to enforce the performance of the proper statu-
14 Julius t. Lord Bishop of Oxford (supra) ; see also oases there cited : also
Maxwell’s Interpretation of Statutes (7th Edn.) p. 210; and Hals. Vol. 27 Art. 327.
Ch. V ] POWERS OF H. E. THE GOVERNOR-GENERAL
85
tory duties imposed on the Controller by the Act of 1911, further
reference is made to this matter in another chapter.
POWERS AND DUTIES OF H. E. THE GOVERNOR-GENERAL IN
COUNCIL IN THE PATENT SYSTEM.
In accordance with the general scheme of the Act of 1911 H. E
the Governor-General has very considerable powers in regard to the
administration of the Patent system in British India. These powers
though they may in a sense be regarded in the light of executive
powers exercised by H. E. the Governor-General on behalf of the
King Emperor, are for the greater part required to be exercised by
him as powers of a judicial character ; entailing the giving of deci-
sions such as are required to be given by a body functioning as a
judicial tribunal.
(i) As to Grant of Patent.
The Governor-General in Council is invested with certain
general powers in connection with the Grant of Patents in that he
can under Section 10, impose such conditions on the Grant as the
Governor-General in Council thinks expedient.
The Governor-General in Council has also certain special
powers and duties in connection with the grant of Patents in connec-
tion with secret inventions and those of which the Patent has been
assigned to the Secretary of State : under Sections 21 and 21A of
the Aot.
(ii) As to the extension of the term of a Patent.
H. E. the Governor-General in Council has powers under
Section 15 of the Act 1911 to extend the term of a patent in a
proper case. All petitions for any such extension are required to be
made direct to H. E. the Governor-General in Council ; and arc dis-
posed of by him or referred by him to a High Court for decision.
Certain preliminaries only in regard to the advertisement of such a
Petition to enable persons interested to oppose the extension and in
regard to the receipt and forwarding of notices of opposition by
persons desirous of opposing the prayer for extension are effected
by the Controller. 18
(iii) As to revocation under Sec. 25.
The Governor General is invested with certain wide discre-
** See Rule 25 : also Form No. 0 and Form No. 6.
86
THE LAW OF PATENTS IN INDIA
[ Clu T
tionary powers for revocation of Patents under Section 25 of the
Aot : if a Patent is held by him to be mischievous to the State or
generally prejudicial to the public. In such a case if the Governor
General in Council declares by notification in the Gazette of India,
the Patent or the mode in which it is exeroised to be mischievous to
the State or generally prejudicial to the public, then the Patent is
then and there deemed to be revoked.
(iv) Revocation or Compulsory Licenses.
Powers that are likely to be more frequently invoked are the
Governor-General’s power of revocation and of ordering the issue
bf compulsory licenses under Sections 22 and 23 of the Act on
petitions made to him on the ground that the demand for a patented
article in British India is not being met to an adequate extent and oh
reasonable terms : or on the ground that the patented article or
process is manufactured or carried on exclusively or mainly outside
British India. It will be noted that the meaning of the former
ground is defined in sub-section 5 of Section 22 which reads as
follows : —
“For the purpose of this section the demand for a patented
article shall be deemed to have been met to an adequate extent and
on reasonable terms : —
(a) If by reason of the default of the patentee to manufac-
ture to an adequate extent and supply on reasonable
terms the patented article, or any parts thereof which
are necessary for its efficient working, or to carry on
the patented process to an adequate extent or to grant
licenses on reasonable terms, any existing trade or
industry or the establishment of any new trade or
industry in British India is unfairly prejudiced . . . .or,
(b) If any trade or industry in British India is unfairly
prejudiced by the conditions attached by the patentee
to the purchase, hire or use of the patented
article or to the using or working of the patented
process.”
Any person interested is entitled to present a Petition on this
ground under section 22, and any person without restriction under
the wording of Sec. 23. The Petition is to be to H. E. the Governor
QteuenXin Council under either section: being left at the Patent
87
eh. V ] APPEALS TO H. E. THp GOVERNOR-GENERAL
Office. On receipt of such a Petition, H. E. the Governor General
in Council will under the Aot consider the Petition. When acting
under Section 22 H.E. the Governor-General in Council may either
dispose of the Petition himself or refer it to a High Court for deci-
sion. In cases where the matter is not referred to a High Court H.E.
the Governor-General in Council may, if he decides in favour of the
Petitioner, order the Patentee to grant compulsory licenses on suoh
terms as H.E. the Governor General in Council may think just or, if of
the opinion that the demand will not be adequately met by the grant
of licenses, then the Governor-General in Council may order the
revocation of the Patent. There is a proviso that an order of revoca-
tion shall not be made before the expiration of four years from the
date of the Patent or if the Patentee gives satisfactory reasons for
his default.
When acting under Sec. 23 as at present worded there appears
to be no option for H. E. the Governor-General in Council to refer
the matter to the High Court ; but he will in all cases dispose of the
matter himself.
(v) As to appeals.
H. E. the Governor-General in Council is constituted by the
Act of 1911 a tribunal of appeal in many instances in respect of
decisions of the Controller. Such a right of appeal is created under
the Act in the following instances : —
From an order by the Controller refusing under Section 5(1)
to accept an application for a patent : under Section 5(2).
From a decision by the Controller under Section 9(2) in
proceedings in opposition to the grant of a patent, whether such
decision be to make the grant or to refuse it : under Section 9(3).
From a direction made by the Controller under Section 10(1 A) :
under the second proviso to Section 10 (1A).
From an order by the Controller under Section 16(5) on an
application for the restoration of a lapsed patent, whether snoh order
be to restore the patent or to dismiss the application : under Section
16(5).
From a deoision by the Controller under Section 17(4) on an
application for the amendment of an application or of a specification,
whether suoh deoision be to allow the amendment or to refuse it :
under Section 17(6).
88 THE LAW OP PATENTS IN INDIA [Ch. V
From an order by the Controller under Section 69(1) refusing
to grant a patent on the ground that the use thereof would,
in his opinion, be contrary to law or morality : under Section 69(2).
The procedure for the disposal of such appeals is regulated by
Section 70 of the Act and by Rule 62 of the Indian Patents &
Designs Rules, 1933.
Though no express provision is contained in the Act or
the Rules giving H. E. the Governor-General in Council any
express power to remand a case for rehearing or for the hearing of
fresh evidence by the Controller, the Calcutta High Court (by a
Court of Appeal ) has held that such a power of remand is an in-
herent power possessed by an appellate tribunal and accordingly that
H. E. the Governor General in Council has such a power in connec-
tion with the disposal by him of an appeal from a decision of the
Controller refusing to grant a patent in opposition proceedings. 14
(vi) As to giving directions in case of doubt or difficulty.
H. E. tho Governor-General in Council may under Section 68
of the Act of 1911 give directions to the Controller in the event of
an application being made to him by the Controller for such
directions.
(vii) Miscellaneous other powers and duties of H. E. the Governor
General in Council.
By the provisions of Section 77 of the Act H. E. the Governor
General in Council is expressly authorised to make rules for the
purposes therein mentioned.
By the provisions of Section 78A, H. E. the Governor General
in Council is expressly empowered in certain circumstances to
direct by notification in the Gazette of India that any other part
of His Majesty’s dominions or any Indian State shall enjoy the
benefit of the reciprocal arrangements referred to in Section 78A.
POWERS AND FUNCTIONS OF THE CIVIL COURTS IN CONNECTION
WITH THE PATENT SYSTEM.
It has been seen that in a large field of matters, all requisite
acts and decisions suoh as are necessary in the working of the patent
■ 14 See Dorman Long & Oo. Ltd. vs, J. C. Mahindra and another (1935), 39
C. W. N. 572 at p. 577.
Ch. V ]
CIVIL COURT’S POWERS
system are apportioned by the Act of 1911 to be made and perfor-
med either by the Controller of Patents or by H. E. the Governor
General in Council. In certain few cases also, as seen, there is a power
for a matter to be referred to a High Court. There are also certain
other matters which are under the Act of 1911 expressly allotted to
be decided by the Civil Courts (either a High Conrt or a District
Court) and are allocated to the jurisdiction of such Court alone,
without power of any adjudication either by the Controller or by the
H. E. the Governor General in Council. The decision on these
questions may be of the very greatest importance to the parties
interested : for this reason litigation on these matters may be of a
most serious tenacity. Questions connected with the conduct and
progress of such suits and proceedings as may arise under the Act
are hereafter dealt with separately more in detail. It is sufficient
here to note the occasions when the decision of matters in dispute
is under the Act called for by a Civil Court of law. These are : —
(i) Suits for infringement of patent : (under Section 29).
(ii) Suits for groundless threats of legal proceedings :
(under Section 36).
(iii) Petitions to a High Court (under Section 26) for the
revocation of a patent.
(iv) References by H. E. the Governor General to the High
Court (under Section 22 (2)) as to an application for
the grant of a compulsory license or for the revoca-
tion of a patent.
(v) References to the High Court (under Section 21(4)) for
the decision of disputes as to the making, use or exer-
cise of an invention.
(vi) References or appeals to the High Court (under Section
64(2)) regarding applications for rectification of tho
register of patents.
(vii) Applications to the Court hearing au infringement suit
during the pendency thereof for amendment of a
Specification or Application for Patent : ( under
Section 18).
(vtii) Petitions to Court for the appointment of a person to
• act on behalf of a person subjeot to a disability : as for
12
90 THE LAW OF PATENTS IN INDIA [Ch. V
,V
the appointment of a guardian for an infant or of a
committee or manager for a lunatic : (under Sec. 74.)
PATENT AGENTS.
Since it cannot be an overstatement either in speaking of the
United Kingdom or in speaking of British India to say that in
modern times the work of the Patent Office could not be carried on
and the modern system of Patent administration would become
unworkable without the work and co-operation of Patent Agents, it
will be convenient here to note something of the duties and func-
tions of Patent Agents and their position in the working of the
system of Patent administration in this country. In order fully to
appreciate the position in British India it will become necessary also
to consider and contrast the legal position of Patent Agents in the
United Kingdom.
Agency generally : provisions in the United Kingdom regulating
what acts are required to be done personally.
In the United Kingdom the degree to which patent transactions
with the Patent Office may be effected by an agent instead of
personally is regulated by the following Rule No. 8 of the (English)
Patents Rules 1932 : vix : —
“8. With the exception of the signing of the following
documents, namely, applications for patents, for a complete
specification to be treated as a provisional specification, for
postdating of applications, for the revocation of patents, for
the grant of a licence under a patent for the indorsement
of a patent “licences of right”, for the refusal of a request
for the indorsement of a patent “licences of right,” for the
cancellation of such indorsement, for the restoration of
lapsed patents, requests for leave to amend applications
or specifications, authorisations of agents, notices of opposi-
tions, requests for issue of duplicate letters patent, and
surrenders of letters patent, all communications to the
Comptroller under the Acts and these Rules relating to
patents may be signed by and all attendances upon the
Comptroller may be made by or through an agent duly
", authorised to the satisfaction of the Comptroller, and resi-
dent or having a place of business in the United Kingdom.
Ch. V]
AGENCY
91
In any particular case, the Comptroller may, if he thinks
require the personal signature or presence of an applicant,
opponent, or other person”.
The Comptroller shall not be bound to recognise as
Buch agent, or to receive further communications in respect
of any business under the Acts from any person whose
name, by reason of his having been adjudged guilty of
conduct discreditable to a patent agent, has been erased
from the register of patent agents kept underthe provisions
of the Acts and not since restored, or (during the term of
his suspension) any person who has been suspended from
acting as a patent agent.”
Agency generally : in British India.
In British India the degree to which patent transactions with
the Patent Office may be effected by an agent instead of personally
is similarly regulated by somewhat corresponding provisions con-
tained in Sections 75 & 76 of the Act of 1911 viz : —
“75. The following documents, namely, —
(1) applications for a patent,
(2) notices of opposition,
(3) applications for extension of term of a patent,
(4) applications for the restoration of lapsed
patents,
(5) applications for compulsory license or revo-
cation, and
(6) notices of surrenders of patent,
shall be signed and verified, in the manner prescribed,
by the person making such applications or giving such
notices :
Provided that, if such person is absent from British
India, they may be signed and verified on his behalf by an
agent resident in British India authorised by him in
writing in that behalf.”
“76. (1) All other applications and communications
to the Controller under this Act may be signed by, and all
attendances upon the Controller may be made by or
9a THE LAW OF PATENTS IN INDIA [ Ch. V
through a legal practitioner or by or through an agent
authorised to the satisfaction of the Controller.
(2) The Controller may, if he sees fit, require —
(a) any such agent to be resident in British
India,
(b) any person not residing in British India to
employ an agent residing in British India ;
(c) the personal signature or presence of any
applicant, opponent or other person.
And by Rule 9 of the Indian Patents & Designs Rules 1938 :
vix —
"9. For all matters falling under the provisions of
section 76 of the Act, any person may, unless otherwise
directed by the Controller, authorise, under his personal
signature any other person to act as his agent and to
receive all notices, requisitions and communications. The
authority may be given on Form 31 Z* 1 5
Thus the position in this respect, as to the extent of tho facili-
ties for and restrictions on the effecting of patent transactions
through agents instead of personally, is the same, broadly speaking,
in India as in the United Kingdom.
Advisability in practice of employing agents : the scope of Patent
Agent's work.
There are many reasons why a person who is contemplating
taking out a Patent or a person who has obtained a Patent should
entrust the work connected with such Patent to an Agent who
specialises in Patent work rather than undertake the work himself.
This would be so in the United Kingdom even if there were no
Chartered Institute of Patent Agents and no regulations governing
Registered Patent Agents as there are in that country. And it is so
also in India though there is no Institute of Patent Agents and
though there is no Registration of Patent Agents in India. There
is nothing of course in law to prevent a prospective patentee from
himself drafting the Specification and Claims to accompany his
application for a Patent or from making all applications connected
>» (For Form No. 31 here mentioned reference may be made to App. No. 5
below).
Ch.V]
PATENT AGENTS
03
therewith or with any Patent matter in which he may be interested
or from doing everything himself. But in practice for him to do so
will be highly inadvisable. A document such as the Specification
and Claims in connection with an Application for a Patent, parti-
cularly if the invention be at all complicated or if the field for which
a monopoly may be obtained is affected by other previous specifica-
tions, calls for considerable technical experience and skill both
scientific and legal if it is to be drawn with accuracy and with the
best results. It is not in drafting a Specification, as is sometimes
apparently supposed, a question merely of describing a machine or a
process from an engineering point of view so that someone else may
understand it enough to manufacture it after the monopoly ends ; but
there is the even more important work of properly delimiting how
much or how little is claimed by the Applicant for Patent as a
monopoly. An inventor’s rights may be seriously prejudiced or even
lost through ignorance of correct procedure and of Patent Law, both
in the drafting of a Specification and Claims and in other Patent
matters. This danger is recognised to such an extent in the United
Kingdom and many other countries that the Patent Office recommend
every prospective patentee to employ a Patent Agent and in some
countries actually insist upon his doing so.
Apart from the work of drafting Specifications it will be found
that in most other matters connected with a Patent the advice and
assistance of a person who specialises in Patent Agency work will be
useful ; and there is a large field of work outside the sphere of any
transactions directly had with the Patent Office, in which Patent
Agents are normally employed.
It will be advisable in many instances for commercial concerns
to employ a Patent Agent in the normal course of business on
standing instructions to keep them informed of all new develop-
ments in connection with Patents. In certain businesses more
than others it is essential to be ahead of or at the very least
fully abreast of all new ideas as they are evolved in connec-
tion with a particular trade or art. It may be that from the
nature of the business it is highly dependent on a Patent or
Patents of its own. In such a case it is vital for the owner
to know of any new developments by others and to have information
at once of any Applications for Patents touching on its own sphere
of activities by others. Whether it may be desired to acquire suoh
94
THE LAW OF PATENTS IN INDIA
[Ch. V
Patents or co-operate with such Applicants, or whether it may be
desired, for one reason or another, on one ground or another, to
oppose the grant of a Patent to such applicants, it will be an equally
vital necessity to have full particulars as early as possible of the new
developments. Or it may be that a business, while possessing no
Patents of its own, may yet be such that it stands to suffer consi-
derable loss when new processes or articles are developed which will
make its own processes or articles out of date. It more often than
not is the case that an owner of a business which is working Patents
of its own is more on the look-at for the development of Patents
by competitors. Yet in truth it will often be the fact that a business
which has no Patents of its own will be affected in precisely the same
way by the development of Patents for inventions in the sphere of its
own business : and will be or should be interested for the same
reasons. It may be equally important in its case for it cither to co-
operate with or to oppose the newcomer who is applying for a parti-
cular Patent. Accordingly one important and valuable service
commonly rendered by a Patent Agent is to keep his client fully
informed of all new developments in the field of new Patents which
may in any manner affect his client 7 business. In spite of the usual
advertisements which are required of all new applications it will be
seldom in practice possible for a business man to keep himself fully
informed of all such new developments without the assistance of a
Patent Agent whose work is to specialise in searches and such
matters.
Even if the business man is in a position to rely on the organi-
zation of his own business to keep him informed of any new applica-
tions for Patents being made about which he is interested, when in-
formation is obtained of such new applications having been filed, it
will no doubt be necessary or at least advisable for him to consult a
Patent Agent, being a person whose daily work necessitates specia-
lizing in reading as well as drafting Specifications, to advise him on
the construction of the new Specifications in order to enable him to
envisage precisely the field and nature of the operations covered
thereby and claimed by the new applicant ; and to advise him
whether co-operation or opposition and to what extent and on what
lines is practicable.
Patent Agents in addition to conducting their Client's business
with the Patent Office or with Patent Agents abroad or with foreign
Ch. V 1
PATENT AGENTS
95
Patent Offices, may be expected to give advice and opinions on all
Patent Matters. As a good Patent Agent is expected to be, apart
from all other things, a first class and trustworthy Engineer or
Chemist or both, a considerable part of a Patent Agent’s work may
also consist of advising in a capacity resembling that of a consulting
engineer upon the engineering aspect or other scientific aspect of his
client’s invention.
Patent Agents are also expected to have an up to date know-
ledge of the Patent Laws & Regulations of Foreign Countries, so as
to be in a position to advise their Clients in what foreign countries
it may be advisable or profitable for them to take out Patents ; and
so as to be able to put through from this country all necessary nego-
tiations iu the foreign countries chosen. In practice it commonly
happens that Patent Agents in India specialise chiefly in the matter
of taking out Patents in countries in the East : for the purpose of
taking out Patents in such countries they may be consulted by Clients
not only from India but from all parts of the United Kingdom,
Europe or America. While if Patents are desired to be taken out in
such territory as South American countries and other countries in
the Western part of the world the matter will commonly be put
through American Patent Agents, who will in their turn carry
through the direct negotiations with the Patent Offices concerned.
Another sphere of the work with which Patent Agents are
often entrusted is for them to act as Applicants for Patents on a
communication from abroad in circumstances when for convenience
or for expedition it is found desirable that a Patent should be applied
for and granted in the name of the Patent Agent ; though he is to
have no interest in the Patent and will be bound to assign the Patent
as soon as granted to the Client. In regard to Patents which it is
desired to take out in British India when the client who is the pros-
pective owner of the Patent is abroad, it is commonly found conve-
nient and useful by such a person for the Indian Patent to be taken
out in the name of such person’s Patent Agent in British India
the Patent being after grant immediately assigned to the client.
Such a procedure has been found particularly useful in cases
where it has been necessary for the Application for Patent to be
expedited and made before a particular date. Such a position, for
example, may arise where the Client in the United Kingdom desires
to obtain an Indian Patent for an invention which at a particular
86 THE LAW OF PATENTS IN INDIA [ Ch. V
date is novel in British India, but which after publication in British
India of certain Scientific Journals or other documents which may be
in the course of post, will become anticipated by prior knowledge :
in certain of such cases it has been found even feasible to have a
description of the invention cabled out to India and for the Patent
Agent in British India to file the requisite application for the grant
in his name to him on a communication from abroad of a Patent
before the arrival in India of the critical documents. It may be
noted in passing that while a Patent Agent who is a B’ellow of the
Chartered Institute of Patent Agents is debarred by the rules of the
Institute from himself owning any Patent or from himself having
any interest in a Patent, yet it has always been recognised that it is
open even for a Fellow of the Chartered Institute of Patent Agents
in the United Kingdom to apply in his own name fora Patent in such
cases where the Patent is taken out on a communication from abroad.'
Patent Agents’ work also involves the making of novelty
searches at the Patent Office ; the collecting of expert evidence,
which process may entail the making of protracted researches and
many and careful experiments for long periods in advance of the
occasion for which the evidence is required ; the giving of evidence
as expert witnesses in infringement suits ; and even the acting as
arbitrators in Patent disputes. A further important and valuable
service usually rendered by a Patent Agent is that of advising his
client of taxes and renewal fees before they become due to keep his
client’s Patents in force and to prevent their unintentional lapse
through non-observance of the requirements.
English regulations concerning the Registration of Patent Agents
and prohibiting Patent Agency work to be done by any person
other than Registered Patent Agents.
In the United Kingdom all Patent Agency work can only bo
done by a duly qualified and Registered Patent Agent. Regulations
to this effect have been in force in various forms in the United
Kingdom since the year 1888.
Previous English Law as to Patent Agents.
By Section 1 of the English Patents, Designs & Trade
Marks Act 1888 1 # it was enacted as follows : —
1 * 51 & 52 Viet c 50.
Ch. V) PREVIOUS ENG. LAW AS TO PATENT AGENTS IN ENGLAND 97
“1. — (1). After the first day of July one thousand eight
hundred and eighty-nine a person shall not be entitled to describe
himself as a patent agent, whether by advertisement, by description
on his place of business, by any document issued by him or other-
wise, unless he is registered as a patent agent in pursuance of this
Act.
(2) The Board of Trade shall, as soon as may be after the
passing of this Act, and may from time to time make such general
rules as are in the opinion of the Board required for giving effect to
this section, and the provisions of section one hundred and one of
the principal Act shall apply to all rules so made as if they were
made in pursuance of that section.
(3) Provided that every person who proves to the satisfaction
of the Board of Trade that prior to the passing of this Act he had
been bonafide practising as a patent agent shall be entitled to be
registered as a patent agent in pursuance of this Act.
(4) If any person knowingly describes himself as a patent
agent in contravention of this section he shall be liable on summary
conviction to a fine not exceeding twenty pounds.
(5) In this section “patent agent” means exclusively an agent
for obtaining patents in the United Kingdom.”
Prior to 1st July 1889 any person without restriction had been
able to do the work' of a Patent Agent. It is stated or implied by
Edmunds that the provisions contained in this section were
enacted as a consequence largely of the Parliamentary Reports of
1851 & 1865 to which he refers as containing “abundant evidence
of the inconvenience and expense to which the absence of any provi-
sion (for means of excluding unqualified persons from acting as
Patent Agents) might give rise.” He also refers to the fact that
“prior to the passing of the Patent Law Amendment Act of 1852
a patent agent’s business was of a comparatively limited character,
as at that time only about 550 patents were taken out annually in
England : (and that) “under the Patent Law Amendment Act the
number of patents annually obtained greatly increased ”.
But it is to be noted that under that Act there was nothing to
prevent an unregistered person from acting as Patent Agent, the
prohibition being only against his describing himself as a Patent
Agent.
13
THE LAW OF PATENTS IN INDIA
[ Ch. V
In pursuance of the power and direction to make Rules granted
under sub-section (2) of the above section, the Board of Trade in
England on 1.1th June 1889 issued certain rules entitled the
“Register of Patent Agents Rules.” Under those Rules the control
and care of the Register of Patent Agents in the United Kingdom
and the control and management of qualifying examinations of candi-
dates and of admission of applicants to the Register was entrusted
to the Body then already in existence which was known as “the
Institute of Patent Agents.” 17
The history up to that date of the Institute of Patent Agents is
also noted by Edmunds as having been originally incorporated under
the English Companies Acts 1802 to 1880 in the name of “the Insti-
tute of Patent Agents” as an association limited by guarantee on
12th August 1882, the use of the word “limited” having been dis-
pensed with by license of the Board of Trade under Section 23 of
the English Companies Act of 1867. It was further stated by
Edmunds, writing as he was in the year 1890, that : “a royal charter
of incorporation has recently been applied for, in which it is pro-
l>osed that Fellows of the Institute should be entitled to describe
themselves as “Chartered Patent Agents.”
The Royal Charter referred to as in the future by Edmunds
was in fact granted in the year 1891 and the Institute thereupon
became an Incorporated Body by virtue of such Royal Charter and
assumed its present title of the “Chartered Institute of Patent
Agents.”
Among the objects of that Institute as defined in the said
Royal Charter were stated the following : — “To promote the
education, Btatus and training of Patent Agents and to maintain
a high standard of rectitude and professional conduct and
knowledge.”
1907.
In the year 1907 a short-lived Act appears to have been passed
entitled the Patents and Designs (Amendment) Act 1907 18 which
contained certain provisions in its Sections 47 & 48 relating to
Patent Agents *, these however do not call for more than passing
mention since the whole of that Act was repealed. by the Act which
1 7 Edmunds ( 1890 edn.) pp. 527 & 528.
** 7 Edw 7 C 28.
Oh. V]
1907
immediately follows it on the Statute Book being the well known
Patents & Designs Act of 1907. x 9
The material provisions of that Act (the Patent & Designs
Act of 1907. 7. Edw 7 C 29) regarding registered patent Agents
were Sections 84 & 85 by which it was provided as follows : —
“84. (1) A person shall not be entitled to describe himself as
a patent agent, whether by advertisement, by description on his
place of business, by any document issued by him, or otherwise,
unless he is registered as a patent agent in pursuance of this Act or
an Act repealed by this Act,
(2) Every person who proves to the satisfaction of the Board
of Trade that prior to the twenty fourth day of December, one
thousand eight hundred and eighty-eight, he had been bonafide
practising as a patent agent shall be entitled to be registered as a
patent agent in pursuance of this Act.
(3) If any person knowingly describes himself as a patent
agent in contravention of this section he shall be liable on convic-
tion under the Summary Jurisdiction Acts to a fine not exceeding
twenty pounds.
(4) In this section “patent agent” means exclusively an agent
for obtaining patents in the United Kingdom.
“85. — (1) Rules \xnder this Act may authorise the comptroller
to refuse to recognise as agent in respect of any business under this
Act any person whose name has been erased from the register of
patent agents, or who is proved to the satisfaction of the Board of
Trade, after being given an opportunity of being heard, to have been
convicted of such an offence or to have been guilty of such miscon-
duct as would have rendered him liable, if his name had been on
the register of patent agents, to have his name erased therefrom, and
may authorise the comptroller to refuse to recognise as agent in
respect of any business under this Act any company which, if it had
been an individual, the comptroller could refuse to recognise as such
agent.
(2) Where a company or firm acts as agents, such rules as.
aforesaid may authorise the comptroller to refuse to recognise the
company or firm as agent if any person whom the comptroller could
‘•Edw 7 0 29.
100 THE LAW OF PATENTS IN INDIA [Ch.V
refuse to recognise as an agent acts as director or manager of the
company or is a partner in the firm.
(3) The comptroller shall refuse to recognise as agent in respect
of any business under this Act any person who neither resides
nor has a place of business in the United Kingdom or the Isle of
Man”
Even under that Act there was no direct prohibition prevent-
ing unregistered persons from acting as Patent Agents, but provi-
sions were made to allow the Controller to refuse to recognise such
persons as agents.
1919.
Then by the English Patents Act of 1919 (section 18) it was
further enacted as follows : —
“18. For section eighty-four of the principal Act, which relates
to the registration of patent agents, the following section shall be
substituted : —
84. — (1) No person shall practise, describe himself, or hold
himself out, or permit himself to be described or held out, as a
patent agent, unless —
(a) in the case of an individual, he is registered as a patent
agent in the register of patent agents ;
(b) in the case of a firm, every partner of the firm is so
registered ;
(c) in the case of a company which commenced to carry on
business as a patent agent after the seventeenth
day of November nineteen hundred and seventeen,
every director and the manager (if any) of the company
is so registered .
(d) in the case of a company which commenced to carry on
busines as a patent agent before that date a manager
or a director of the company is so registered :
Provided that in the last-mentioned case the name of such
manager or director shall be mentioned as being a registered patent
* agent in all professional advertisements, circulars or letters in whioh
the name of the oompany appears.
(2) Every individual not registered as a patent agent before
the fifteenth day of July nineteen hundred and nineteen who proves
Ch. V ]
1919
101
to the satisfaction of the Board of Trade that prior to the first day
of August nineteen hundred and seventeen he was bonafide practis-
ing as a patent agent, whether individually or as a member of a firm,
or as a manager or direotor of an incorporated company, shall be
entitled to be registered as a patent agent if he makes an application
for the purpose within such time as may be fixed by the Board of
Trade, unless after giving an applicant an opportunity of being heard
the Board of Trade are satisfied that he has whilst so practising been
guilty of such misconduct as would have rendered him liable, if his
name had been on the register of patent agents, to have his
name erased therefrom.
(3) If any person contravenes the provisions of this section,
he shall be liable on conviction under the Summary Jurisdiction Acts
to a fine not exceeding twenty pounds, and in the case of a company
every director, manager, secretary, or other officer of the company
who is knowingly a party to the contravention shall be guilty of
a like offence and liable to a like fine.
(4) For the purposes of this section, the expression “patent
agent” means a person, firm, or company carrying on for gain in the
United Kingdom the business of applying for or obtaining patents
in the United Kingdom or elsewhere.
(5) Nothing in this section shall be taken to prohibit solicitors
from taking such part as they have heretofore taken in any proceed-
ings under this Act.
(6) No person not registered before the fifteenth day of July
nineteen hundred and nineteen shall be registered as a patent agent
unless he be a British subject.”
Section 85 remained as before.
1932.
Finally by the English Act of 1932 Section 84 of the principal
Act was further amended so as to read in the form in which it now
stands which is given below. While section 85 of the principal
Aot was also amended (by an amendment to give power to the
Comptroller to refuse to recognise during the term of his suspension
an agent who has been suspended but whose name has not actually
been taken off the register) by the recent Aot of 1932. The provisions
of this section as they now stand are also given below.
log THE LAW OF PATENTS IN INDIA [Ch. V
Previous Rules.
Under Section 86(g) of the English Act of 1907 the Board of
Trade were expressly given the power to make rules for regulating
the keeping of the register of Patent Agents under that Act. This
provision has been untouched by the 1919 amending Act and by the
1932 Act and continues in force at the present day.
Since the Rules which were made as already mentioned in 1889,
various other Rules relating to the register of Patent Agents havo
been made. Reference may be made to the Register of Patent Agents
Rules 1908 dated 17th December 1907 which were made by the
Board of Trade under the English Patents & Designs Act 1907.
The Rules in this regard now in force are referred to below.
Present English Law as to Patent Agents.
By Section 84 and 85 of the English Patents & Designs Act
1907-1932 as they stand today it is provided as follows : —
“84. Registration of Patent Agents— (1) No person shall prac-
tise, describe himself, or hold himself out, or permit himself to be
described or held out, as a patent agent, unless —
(a) in the case of an individual, he is registered as a patent
agent in the register of patent agents ;
(b) in the case of a firm, every partner of the firm is so
registered ;
(c) in the case of a company which commenced to carry on
business as a patent agent after the seventeenth day
of November, nineteen hundred and seventeen, every
director and the manager (if any) of the company is
so registered :
(d) in the case of a company which commenced to carry on
business as a patent agent before that date, a manager
or a director of the company is so registered :
Provided that in the last-mentioned case the name of such
manager or director shall be mentioned as being a registered patent
agent in all professional advertisements, circulars or letters in which
the name of the company appears.
(2) . If any person contravenes the provisions of the section,
he shall be liable on conviction under the Summary Jurisdiction Apts
Ch. V] PBESENT ENG. LAW AS TO PATENT AGENTS IN ENGLAND 108
to a fine not exceeding twenty pounds or in the case of a second or
subsequent conviction to a fine not exceeding fifty pounds, and in
the case of a company every director, manager, secretary, or other
officer of the company who is knowingly a party to the contravention
shall be guilty of a like offence and liable to a like fine.
(8) Notwithstanding anything in any enactment prescribing
the time within which proceedings may be brought before a Court of
summary jurisdiction, proceedings for an offence under this section
may be commenced at any time within twelve months from the date
on which the alleged offence was committed.
(4) For the purpose of this section, the expression “patent
agent” means a person, firm, or company carrying on for gain in the
United Kingdom the business of applying for or obtaining patents
in the United Kingdom or elsewhere.
(5) Nothing in this section shall be taken to prohibit solici-
tors from taking such part as they have heretofore taken in any
proceedings under this Act.
(G) No person not registered before the fifteenth day of July,
nineteen hundred and nineteen, shall be registered as a patent agent
unless he be a British subject ”
“ 85 . Agents for Patents . — (1) Rules under this Act may
authorise the comptroller to refuse to recognise as agent in respect
of any business under this Act any person whose name has been
erased from the register of patent agents, or (during the term of his
suspension) any person who has been suspended from acting as a
patent agent, or who is proved to the satisfaction of the Board of
Trade, after being given an opportunity of being heard, to have been
convicted of such an offence or to have been guilty of such miscon-
duct as would have rendered him liable, if his name had been on the
register of patent agents, to have his name erased therefrom, and
may authorise the comptroller to refuse to recognise as agent iu
respect of any business under this Act any company which, if it had
been an individual, the comptroller could refuse to recognise as
such agent.
(2) Where a company or firm acts as agents, such rules as
aforesaid may authorise the comptroller to ' refuse to recognise the
company or firm as agent if any person whom the comptroller could
refuse to recognise as an agent acts as director or manager of the
company or is a partuer in the firm.
J04
THE LAW Of PATENTS IN INDIA
tCh.V
(3) The comptroller shall refuse to recognise as agent in
respect of any business under this Act any person who neither
resides nor has a place of businesss in the United Kingdom or the
Isle of Man.”.
There would appear to be no question that the provisions
of the English Rule No. 8, previously referred to, directing which
documents may be signed or which acts may be done through an
agent and which must be signed or done personally, is subject to
the provisions relating to the registration of Patent Agents which
are contained in Section 84 & 85 above. It is clear therefore in the
light of the various provisions already mentioned that in the United
Kingdom no person who is not a duly qualified and registered Patent
Agent may act as an Agent in any Patent matter which is ordinarily
the work of a Patent Agent. And in regard to such matters as are
mentioned in Rule No. 8 as being allowed to be transacted by an
agent, since to effect such transactions must be to act as a Patent
Agent, it follows that such matters, equally, if done through an agent
and not personally must be done through a Patent Agent.
Present Rules as to the Register of Patent Agents.
The present rules now in force made by the Board of Trade by
virtue of Section 86 (f) of the English Patents & Designs Acts 1907-
1932 are known as the Register of Patent Agents Rules 1932. 20 For
convenience of Reference these are set out in an Appendix. 21 The
extent to which the Chartered Institute of Patent Agents in the
United Kingdom working under and in collaboration with the Board
of Trade, controls the Register of Patent Agents and Registered
Patent Agents themselves sufficiently appears from a perusal of
these Rules.
The Chartered Institute of Patent Agents as it functions in the
United Kingdom at the present day : qualifications required for
Registered Patent Agents.
By Rule 6 of the Register of Patent Agents Rules 1932 it is
provided as fallows : —
“6. Final qualifying examination far registration . — No person
shall be entitled to be registered as a patent agent unless he has
40 Dated 4th October 1932 : S. R. & O 1932 No 820.
11 Appendix No. 3.
Ch. V]
INDIAN LAW AS TO PATENT AGENTS
105
passed, and produces or transmits to the Registrar a certificate
under the seal of the Institute that he has passed, such final exami-
nation as the Institute shall from time to time prescribe.”
Rules 7, 8 & 9 also contain provisions regarding an intermediate
examination and further regulations in regard to the management of
both the intermediate examination and the final examination. These
rules also contain regulations regarding the minimum qualifications
necessary in candidates for such examinations. The management of
the examinations is left almost entirely to the Chartered Institute of
Patent Agents. The examination is designedly difficult to pass, in
later years the percentage of successful candidates being only about
25 ; and the number and variety of the subjects in all of which the
candidates must satisfy the examiners, ensures that a qualified Patent
Agent is not only an expert in Patent Law and Procedure, but also
has had a very extensive and thorough technical training, not only in
engineering but in chemistry, physics and the other branches of
science. The examination is controlled by the Chartered Institute
of Patent Agents ; and successful candidates, who have thair names
entered upon the Register of Patent Agents as published under the
provisions of the Register of Patent Agents Rules 1932, may seek
election to fellowship of the Institute. Inventors in the United
Kingdom may consult Chartered Patent Agents (i.e. Registered
Patent Agents who have been elected to fellowship of the Chartered
Institute of Patent Agents) on Patent matters in the certain know-
ledge that they will receive unbiassed opinions and technical and
legal assistance of a very high order.
At the present time there are not more than 369 Registered
Patent Agents in the United Kingdom of which some 275 only are
Chartered Patent Agents, that is to say, Fellows of the Chartered
Institute of Patent Agents.
Indian Law as to Patent Agents.
There is no Register of Patent Agents in British India.
There is no Institute or other body, whether company or
corporation, of Patent Agents in British India ; cither privately
established or created by any Act,
There are thus no Registered Patent Agents under the Indian
Patents Act : nor are there any Chartered Patent Agents in British
India — except in the sense that the term may be applied to persons
14
THE LAW OP PATENTB IN INDIA
[Ch. V
106
who have qualified in the United Kingdom aa Registered Patent
Agents under the English Acts, and have thereafter been elected to
be Fellows of the Chartered Institute of Patent Agents of the United
Kingdom, and have thereafter come to British India. As the work
entailed in the making of applications for patents and in the drawing
up of specifications, and indeed almost all work connected with patent
transactions, is by its nature highly technical and specialised, it is
natural that the work whioh is done in England and other countries
by Chartered or Registered Patents Agents is done in fact in India
by certain persons and firms specialising in such work who are
known, commonly speaking, as Patent Agents or Patent Attorneys.
But such term, except in so far as it relates to the English or foreign
qualifications of particular persons, is in no sense more than a
popular description indicative of the nature of the work done by such
persons. There is no system by which any minimum standard of
qualifications for persons doing the work of Patent Agents as to
technical knowledge, character or conduct can be established or
maintained ; and no Body of persons, however few its members, by
which the rights and status of its members may be protected.
Indeed it is a matter for comment that in a country where the patent
system has been developed, to the extent to which it has been in
British India, with the voluminous Act and Rules which have been
put into operation here, there has been no further development
towards the creation of any such Institute for the dual purpose of the
control and the protection of patent agents ; and no provision for a
Register of Patent Agents for the benefit and protection not only of
the Patent Agents themselves but of the public.
There being in India no Chartered or Registered or Statutory
Patent Agents, there are, naturally, no statutory restrictions pro-
hibiting anyone from practising as a Patent Agent.
The non-existence of any statutory Patent Agents in India is
indirectly referred to officially in the following short passage
contained among the Instructions for the Guidance of Inventors
and others at p. 115 of the Patent Office Handbook (5th Edn.) as
follows : —
4 Patent Agents — The Patent Office does not authorise persons
to practise as Patent Agents ; nor does it undertake to keep a
list of persons willing to act as Patent Agents. Any person duly
Ch. V]
COST OF OBTAINING A PATENT
.107
authorised by means of a power of attorney, or by means of autho-
rity given on Form No. 31, will be allowed to act as an Agent
provided that he is resident in British India.”
It may be noted that the Indian Act under Section 76 refers
to “an agent authorised to the satisfaction of the controller.” It
has on occasion been suggested that that phrase means that only
persons can practise as Patent Agents who obtain the consent or
positive authorization of the Controller to practise regularly. But
it is submitted that there is no foundation for such a view ; and
that the Controller has no power to refuse to recognise any agent
except only in a case where the Controller is not satisfied that the
agent is properly authorised by his principal. This view is in keep-
ing with the view which is in practice taken by the Patent Office
itself as stated in the Patent Office Handbook in the passage already
referred to. It seems clear that the authorization or authority
which is called for under Section 76 is not an authorization by the
Controller but an authorization by the agent’s principal. Thus it
is clear under the Act and from Rule 46 and Form No. 31 that
anyone, provided only he is duly authorised by his principal, may
under the present provisions of the law act as a Patent Agent in
British India.
Cost of obtaining a Patent.
It is obviously not possible in the abstract to make any
precise statement aB to what it will cost to take out a Patent.
This will naturally vary in different cases according to the charges
of the Agent employed and according to the degree of complexity
of the invention and according to the strength of the opposition,
if any, and other such matters. But as the question is so often
asked what it will cost and as so many people have no idea of any
figure, it may be of some service to prospective applicants for
Patents to state here that in an ordinary case in which the grant
is not opposed, if Agents of the highest standing and skill are
employed, for all steps up to and inclusive of obtaining the grant,
that is to say inclusive of the drafting of the specifications, and
the making of all necessary applications and the paying of all
Patent Office fees and inclusive of all charges payable to the
Agents for their work, the total amount payable should not exceed
a sum in the neighbourhood of the comparatively small figure of
108
THE LAW OF PATENTS IN INDIA
[ Ch. V
Rs. 200/-. It will often no doubt be advisable where possible for
the prospective patentee to arrange for a consolidated sum to be
paid by him to include all such matters, and thus save the annoy-
ance of the mounting up of many small charges which may finally
reach an unexpectedly high total.
CHAPTER VI
WHAT THINGS MAY BE PATENTED— CERTAIN REQUISI-
TES OF A VALID PATENT— ATTRIBUTES NECESSARY
IN REGARD TO THE INVENTION— I. SUBJECT
MATTER— THE TERMS “INVENTION” AND
“MANNER OF MANUFACTURE”—
II. NOVELTY— HI. UTILITY.
PART I.
Since a Patent cannot be obtained for every kind of thing in
the world it is important to discover for what things it can be ob-
tained and for what it cannot. Again, since even after grant a
Patent may in certain circumstances be declared invalid, it is im-
portant to discover what constitutes a good patent in the first place ;
that is, a patent for which there is no risk, after grant, of its being
upset or interfered with.
It will be seen that it may happen that a grant of a Patent is
made without by any means a complete enquiry in all directions as to
the complete validity of that patent : then, since every grant is made
only conditionally, that is, on the terms that the grant will be void in
the event of its being afterwards found for any reason that the Patent
is invalid, from this two results follow. There is the advantage to an
applicant that he may obtain a grant for a patent which would not
be granted to him if there had been a complete investigation into its
validity at first ; and as long as no one comes forward to upset that
patent he will continue to enjoy, for a patent which in truth is defec-
tive, all those advantages which would have been afforded by a com-
pletely good patent. But there is also the disadvantage, in some
cases great, that the patentee may be lulled into a false sense of
security ; thinking he has a completely good patent while in truth it
is defective. If he expends capital or lays down workshops or
otherwise incurs liabilities over the patent, then, later, when it is
found to be invalid, and when, on top of everything, he finds himself
saddled with having to pay the expensive costs of the proceedings
110
THE LAW OF PATENTS IN INDIA
[Ch. VI
brought by the person attacking the validity of the patent, the result
may turn out for him to be worse than if he had never obtained any
patent at all in the first place. For these reasons it will be con-
venient before going further, to investigate in this Chapter what are
the attributes of a good Patent. It will be possible then to appre-
ciate (in later chapters) the stages at which, and the grounds on
which, a Patent which is defective may or may not be successfully
attacked.
It is proposed in this chapter to discuss certain qualities
known as “subject-matter”, “utility” and “novelty” which are re-
quired to be possessed by a thing if it is to be patented.
These are qualities inherently necessary in the thing itself :
otherwise it is not fit for any patent to be granted for it. In a subse-
quent chapter it is proposed to discuss other features of an inven-
tion, as described in a specification, which are essential for a good
and valid Patent. It will be convenient to consider these essential
matters as a whole, together, so as to appreciate fully what are the
essentials of a valid patent ; and it is considered that this course
will be more useful than a mere running commentary on the Act.
Such a commentary on the Act, section by section, would of neces-
sity deal with various grounds of objection as they might occur,
haphazard, in connection with the various sections of the Act : in
that case the same ground would recur in the same or slightly differ-
ent forms in connection with different sections relating to different
proceedings. Such a treatment of the matter might develop into a
wearisome repetition or be so disjointed as to be unintelligible. The
course in this work proposed to be adopted is, rather, after a general
survey of such requisites as are necessary in a valid patent as a
whole has first been made, thereafter at later stages, as convenient, to
note in relation to the Act how and when objections for the want of
any one or more of these requisites can be effectively taken in the
different proceedings which are open under the Act at various
stages : by way of opposition to the grant or by way of revocation
of the grant.
As an illustration it may be mentioned that objections on the
ground of want of novelty may be taken either at the stage before
acceptance of the application by the Controller, or at the stage of
opposition to the grant by an opponent, or at the stage of revoca-
tion proceedings by an applicant for revocation or at the stage of an
Ch. VI] SUBJECT MATTES 111
infringement suit as a defence to each suit by the defendant ; at
each of these stages the objection for want of novelty can only be
raised as to certain specific elements or grounds of want of novelty
which are prescribed by the Act in the section relating to the parti*
cular proceeding ; but the principles relating to want of novelty are
the same throughout. For the Patent to be valid all through, so that
the patentee may resist opposition at any of these stages, it is essen-
tial that it does not suffer from want of novelty in any one respect.
It is for these reasons proposed first to take a general survey of the
meaning of novelty such as is required in Patent Law as a whole in
this chapter, so that, it is hoped, this may make more simple and
intelligible a consideration of specific objections in specific pro-
ceedings in later chapters.
Of the three matters thus to be considered in this chapter it
will be convenient to treat first of “subject-matter” ; secondly of
“novelty” and thirdly of “utility ; and this chapter being divided for
convenience into parts, those heads are accordingly dealt with
separately in Part II, Part III and Part IV respectively of this
Chapter.
PART II. SUBJECT-MATTER.
Subject matter in the wide sense previously used.
In common parlance anyone speaking of the “subject matter”
of a Patent might mean to refer to the whole subject matter of a
Patent in all aspects and in relation to all its attributes. This
would cover a consideration of its attributes of novelty and utility
as well as all other topics which might concern its subject matter
as a whole.
Formerly also, in Patent parlance, this was what was intended
by a reference to the “subject matter” of a Patent. This may be
seen from the arrangement of the work of Edmunds on- Patents
published in 1890, in whioh Chapter IV is devoted to “the subject
matter of Letters Patent” ; and deals with this topic under 4 sec-
tions : (1) in general, (2) as to “any manner of manufacture”.
(3) as to “novelty” and (4) as to “utility etc.”
112
THE LAW OP PATENTS IN INDIA
[Ch-VI
Recently however, it has become common, in patent legal
phraseology to restrict the term “subject matter” to those topics
which concern the inherent quality of the actual subject matter of
a Patent : that is to say the actual “stuff” of which the invention is
made, if it can be put in that colloquial way, exclusive of any consi-
deration of any extraneous attributes relating to the stuff, such as
the novelty or utility thereof. That is to say, in modern use the
term “subject matter” is restricted to that part only of what Ed-
munds referred to as “subject matter”, which does not relate to such
topics as novelty and utility. The matter is a little difficult to be
put into precise words, but the distinction is a clear one.
In this work, the term subject matter is used in the restricted,
modern sense. When referring in this work to what Edmunds
referred to as subject matter in the larger sense, this will be indi-
cated by a reference to “the requisities of a patent” or “the attributes
of a patent” or some such other phrase : as is done at the heading of
this chapter.
Subject matter in the sense now used.
Several topics distinct but overlapping, fall to be considered
with reference to the subject matter of an invention. One involves
the qualities bound up in the expression “manner of manufacture”
and the various different aspects of that expression, another the
inventive qualities necessary to constitute a thing “an invention”.
The actual wording of Section 6 of the Statute of Monopolies
may be borne in mind : it was there provided : —
“that any declaration before mentioned shall not extend to
any letters patent and grants of privilege for the term of fourteen
years or under, hereafter to be made, of the sole working or making
of any manner of new manufactures within this realm to the true
and first inventor and inventors of such manufactures.”
The “declaration before mentioned” refers of course to the
declaration of the invalidity of monopolies as a whole : the patents
here mentioned being by way of exception to that.
Since the Statute of Monopolies invalidates all Patents except
those which are for “a manner of new manufacture”, it beoomes
essential that a Patent, to be valid, must possess the qualities in-
ferred by Buch term.
Ch. VI]
MANNER OF MANUFACTURE
IIS
A consideration of the term reveals that it postulates two
tests. Firstly whether the thing is a manner of manufacture :
secondly whether the thing is new.
“Manner of manufacture”.
Certainly in the earlier days of monopolies preceding 1623
and for the earlier period after the Statute of Monopolies it was
common chiefly to grant monopolies or patents in respect of a whole
single manufacturing trade : as for the manufacture and sale of gold
thread (or, as it might have been in more modern times of footballs).
It was no doubt with a mind to encourage within the realm new
manufactures in that sense and in such manner that the Statute of
Monopolies came to be worded as it was.
Enlargement of the meaning of the term.
Later, and especially in the great industrial revolution of the
late eighteenth and early nineteenth centuries, the Courts came to
extend the meaning of the word “manufacture” to include, besides
whole manufacturing trades, lesser items of manufacture, and
improvements of methods of processes of manufacture : with the
result that there have been innumerable instances of patents for
things small in themselves which have had far-reaching economic or
humanitarian importance. 1
At first the process of enlargement went so far as to include
individual separate articles of manufacture but hesitated to include
also processes.
The next step was for the Courts to decide to include such
processes also, as it became realized that the process of manufactur-
ing old articles by a cheaper, or more eflioient means often consti-
tuted an invention of greater worth and importance than the manu-
facture merely of a new article. Among the earlier judgments
giving rulings on these points, reference may be made to that in
Boulton and Watt v Bull 2 in R v Wheeler 3 and in Ralston v Smith*.
In Boulton & Watt vs Bully in which case James Watt was one of
the Plaintiffs suing for infringement of his patent relating to steam
1 See Terrell p. 48.
* (1795) 2 H. Bl. 463, or 126 E. R. 651.
(1819) 2. B. & Aid 845, or 106 E. R. 392.
(1865) 11 H. L. 0. 224, or 11. E. R. 1318.
15
8
114 THE LAW OP PATENTS IN INDIA [ Ch. VI
engines, it was observed (by Heath J. at page 482 referring to the
Statute (21 Jac 1) as follows : —
“What, then, falls within the scope of the proviso ? Such
manufactures as are reducible to two classes ; the first class includes
maohinery, the second substances ...formed by chemical or other
processes, where the vendible Bubstancc is the thing produced, and
that which operates preserves no permanent form I approve of
the term “manufacture” in the Statute, because it precludes all nice
refinements ; it gives us to understand the reason of the proviso,
that it was introduced for the benefit of trade”.
Also in the same case (by Eyre C. J. at p. 492) as follows : —
“It was admitted in the argument at the bar that the word
“manufacture” in the Statute was of extensive signification ; that it
applied not only to things made, but to the practice of making ;
to principles carried into practice in a new manner ; to new results
of principles carried into practice”.
In R. v Wheeler it was observed (by Abbott C. J. at p. 349) as
follows : —
“Now the word “manufacture” has been generally understood
to denote cither a thing made, which is useful for its own sake, and
vendible as such, as a medicine, a stove, a telescope and many others,
or to mean an engine or instrument, or some part of an engine or
instrument, to be employed, either in the making of some previously
known article, or in some other useful purpose, as a stocking- frame,
or a steam-engine for raising water from mines. Or it may perhaps
extend also to a new process to be carried on by known implements,
or elements, acting upon known substances, and ultimately produc-
ing some other known substance, but producing it in a cheaper or
more expeditious manner, or of a better and more useful kind”.
In Ralston v Smith it was observed (by Lord Westbury, L.C.)
• at p. 246 as follows : —
“Your Lordships are well aware that by the large interpreta-
tion given to the word “manufacture”, it not only comprehends
productions, but it also comprehends the means of producing them.
Therefore in addition to the thing produced, it will comprehend a
new machine or a new combination of machinery ; it will compre-
hend a new process or an improvement of an old process”.
Ch. VI]
A TERM OF ART
115
There is to-day not the slightest doubt on those points :
patents are daily taken out for new improved methods of manufac-
ture and for new processes as well as for new articles manufactured.
There is still however even to-day a realm of invention relating to
things which fall outside the meaning of the term “manner of manu-
facture” even as it has been enlarged by the Courts ; and for these
things even to-day no valid Patent can be granted. Even in these
days there frequently occur instances of inventions which are non-
patentable and for which any patent if granted will be held on
adjudication to be invalid for the reason that the subject matter to
which it relates is not a “manner of manufacture”.
Difficulty in formulating any criterion.
When it is seen that a thing may itself be a manufactured
thing (like a part of an aeroplane engine), that is to say in ordinary
parlance the result, and not the manner, of a manufacture, and yet
be held under Patent Law to be a “manner of manufacture” ; and
when it is seen also that a thing may be a manufactured thing (like a
bicycle or a saucepan) and yet not be held under Patent Law to be a
“manner of manufacture” — for want of subject matter ; it at once
becomes clear that it is very difficult indeed to find any precise
formula or definition in words to describe the meaning of the term.
No doubt the term itself would have been altered or elucidated by
qualifying or explanatory words by now, if it had not been that so
many cases have been fought and so much time and money spent over
the meaning of the term, that it has now, through the discussion and
judgments in the reported cases, come to have a certain well known,
though technical, meaning as a term of art in Patent Law. This
being so it has no doubt been considered to be more to the public
advantage to let the matter rest where it is, than by the enactment
of a new definition to inaugurate an entirely new series of contro-
versies as to the meaning of such new definition.
Manner of new manufacture.
It has already been observed that the Statute of Monopolies
refers to “a manner of manufacture”. The definition of an inven-
tion in Sec. 2(8) of the Indian Act of 1911 (corresponding broadly to
the similar definition in the English Act) also contains a reference
to the same term 5 . An analysis of this expression at once reveals
* See also the definition of “manufacture” in Sec. 2(10).)
116
THE LAW OF PATENTS IN INDIA
[Ch. .VI
a two-fold demand. The one being that the invention must be for a
manner of manufacture, as mentioned, the other being that it must
be for something new. This is obvious : what is rather less obvious,
is the suggestion which has been made as a result of discussions in
various cases, that the expression will be found on further analysis
in truth to reveal a third requisite' in addition to the two mentioned.
It has been suggested that not only may a thing fail to be “a manner
of new manufacture” in the patentable sense through not being new,
and not only may a thing fail to be a "manner of new manufacture”
in the patentable sense through not being a manner of manufacture,
but that a thing, though both new and also a manner of manufac-
ture, may yet in certain circumstances not be a “manner of new
manufacture” in the patentable sense.
To elucidate this proposition it will be best, as an illustration,
to take a quotation from one of the standard English works on
Patents : from Fletcher Moulton at p. 15 : as follows : —
"From the earliest times the Courts have held that a manufac-
ture of a thing new in itself does not necessarily constitute a new
manufacture. It is in many, if not in all cases, the business of a
manufacturer to constantly vary his products, and hence it follows
that the novelty of the product cannot alone determine whether its
production is a new manufacture. Probably the best criterion is
whether that which is claimed as a new manufacture lies within the
limits of development of some existing trade, in the sense that it is
such a development as an ordinary person skilled in that trade could
have naturally made, had he wished to. If so, then, even if the
actual thing is new in fact and is a manufacture, it is not a new
manufacture but simply a particular instance of an old one”.
The learned author then proceeds to illustrate the proposition
by reference to a new wall paper : pointing out that though the
thing in Auch a case is new and a manufacture, it is not a “manner of
new manufacture” in the accepted sense of the word ; since the
manufacturer of wall papers is in the course of his business always
producing new wall papers, he is expected to do so and there is no
sufficient novelty in so doing to make the thing or the method a
“manner of new manufacture.” Reference is also made to a certain
decided case where an application was made for a patent for casting
tubular boilers (used for heating green-houses) in one piece — the
practice up till then having been to cast in several parts. The
ch. yi]
INVENTIVE STEP
.117
learned author suggests that, though this was an instance where the
thing was new and a manufacture, it was not a “manner of new
manufacture” within the accepted sense of the term. The third test
which he suggests is this : — does tho novelty appertain to the manu-
facture ?
Two tests as to the “manner of new manufacture.”
It is submitted that this refined analysis, though of interest in
raising a discussion from which emerges a fuller understanding of
the requisites of proper subject matter, is yet unnecessary. It is
submitted that it is for practical purposes sufficient to consider the
implications of the term “manner of new manufacture” merely under
two and not three testB that is to say (1) is the thing a manner of
manufacture in the accepted sense of Patent Law, (2) is the thing
new in the accepted sense of Patent Law.
The question of novelty is treated hereafter as a separate ques-
tion ; it may therefore for convenience be eliminated from the present
consideration of subject matter proper.
Other elements of subject matter.
It has long been recognised that certain other elements or
tests of subject matter must also be considered. One such is the
question of the existence of “the scintilla of invention” or of “an
inventive step.”
It is possible that the characteristic which the learned author
had in mind in prescribing the tests “does the novelty appertain to
the manufacture” had reference to or was connected with the same
kind of characteristic as that now referred to under the head of
“the scintilla of invention” or “the inventive step.” Undoubtedly
the question whether there has been an inventive step, is quite dis-
tinct from a question whether a thing is new. It is for present
purposes an immaterial link between the two questions that it
happens that an inventive step is a characteristic which can only
occur (apart from exceptional cases) in relation to things which are
new.
It vrill be noted that the definition of an invention given in
see 2(8) of the Indian Act of 1911 is as follows : —
“Invention means any manner of new manufacture and includes
an improvement and an alleged invention” ; and the corresponding
115
THE LAW OP PATENTS IN INDIA
[Ch. VI
English definition is in broadly similar terms. It may be that if it
had been necessary to treat that definition as an exhaustive cata-
logue of all the elements of subject matter required to be found in a
patentable invention, then, since an inventive step has long been
considered to be a requisite, it would have been necessary to find
words within such definition calling for an inventive step. In that
event it would have been necessary for the existence of an inventive
step to have been explained as being an element within the meaning
of the term ‘‘manner of new manufacture”. It may have been with
this object that the learned author framed his test in that way —
“does the novelty appertain to the manufacture” ; that is to say
with the object of embracing this requisite within the term “manner
of new manufacture”.
But it seems clearly unnecessary to treat the definition of
“invention” in Sec. 2(8) as so exhaustive as to include all requisite
elements of patentable subject matter. And indeed it has been held
that it is not necessarily everything which falls within the definition
of a “manner of new manufacture” that can be patented.
The point whether the term “manner of new manufacture” in
itself embraces the existence of an inventive step appears in any
event to be one of no more than academic interest. Since it has
long been established that an inventive step is an essential part in
the subject matter of an invention such as will support a valid
patent, it makes no practical difference whether this element is to be
considered as being within or without the term “manner of new
manufacture”.
For convenience of arrangement in this work the element of
an inventive step is treated as an clement of necessary subject
matter outside the term “manner of new manufacture” : and as a
distinct element of subject matter which is inherently demanded in
any invention which is to be the basis of a valid patent.
The scintilla ot invention or inventive step.
The thing patented must involve invention : or, as it has been
put, it must involve “an addition to the stock of public knowledge”.
A very slight exercise of the inventive faculty is enough. If what
has been termed the “scintilla” of invention or of the inventive
faculty can be shown to have existed in the mind of the inventor,
this will be enough. It is not necessary that there should have been
Ch. VI] ILLEGALITY —IMMORALITY 119
long search by the inventor or anything of that kind. It is however
necessary that there should be an inventive step and an exercise of
that invention which is necessary as the ground of a patent. It
follows that amongst the tests required for subject matter, a further
test must be fulfilled in regard to the existence of an inventive step
vix : —
Is the thing such that its creation has called for the
scintilla of invention in the accepted sense of Patent Law and
has there been an inventive step comprised in the alleged
invention ?
Illegality : immorality.
There is a further aspect of subject matter which should also
here be considered. Since it is possible for a patent to be refused to
be granted or for it to be revoked on grounds amounting to illegal-
ity and immorality, mention of these two qualities must not be
omitted amongst the tests required for subject matter.
In view of the Statute of Monopolies, the whole scheme of
which is to make an exception in favour of patents for inventions,
in so far as they were for the public good but not otherwise, it is
submitted that no alleged patent can be valid for an invention of
which the purpose is illegal. It is submitted that the provisions in
the Act of 1932 in England are merely declaratory and effected no
alteration in the law in England.
For authority for this proposition reference may be made to
Hindmarch at p. 142 where he states that in his view, even in his
day, a patent for an illegal purpose would not be valid ; as for
example a patent for an instrument only usable as a housebreaking
implement. And it is submitted on this reasoning that it is one of
the essential attributes of a good patent in India also that the
invention to which it relates should not be for any illegal purpose.
To consider the matter from another angle, it has always been
the law — quite apart from later legislation that a patent to be valid
must be useful. From this point of view it may be surmised that
useful means, not useful to the individual who may be a burglar or
some other law-breaker or a crank or a lunatic, but useful to the
public and to the state. If so, patents which are for an illegal
purpose are ruled out also on the wider ground of non-utility.
As to patents for an immoral though not illegal purpose the
120
THE LAW OF PATENTS IN INDIA
[ Ch. VI
position is different. There is the difficulty : what standard is to
be applied. The Courts are Courts of Law and not of morality.
And there is no fixed standard of morals as there is of law by which
any given case could be tested in the Courts. Certainly if the
object of an invention could rightly be said to be immoral in Buch
degree as to be not ueeful for the public good, there could be no
valid patent therefor. Further than this it is submitted it is not
safe to dogmatise.
Previous English Law.
Before the amendments effected in England by the English
Patents and Designs Act of 1932, there was no express provision
making the illegality of the purpose of an invention a ground of
invalidity available either as a defence in a suit for infringement
or in support of an application for revocation. There was however
even under the previous English Act of 1907 a provision under the
old Section 75 somewhat similar in effect to the present Section 75,
whereby the Comptroller of Patents was expressly empowered to
refuse to grant a patent of which the use would in his opinion be
contrary to law or morality.
Current English Law.
There is now a direct provision under present English law by
virtue of Section 25 (2) (m) which constitutes the illegality of the
purpose of an invention to be a ground of invalidity, which may be
raised as a defence in an action for infringement as well as in
support of an application for revocation ; the precise wording
being as follows : —
“that the primary or intended use or exercise of the
invention is contrary to law”.
There is no provision in that section concerning inventions
intended to be used for a purpose which may be adjudged to be
immoral.
It is also provided by the current English Act by virtue of
Section 75, that the Comptroller of Patents at the stage when the
application for Patent is being entertained by him, may refuse to
grant a patent, in effect, if the purpose of the Patent is either illegal
or immoral : the wording used in that section being : — “of which
the use would, in his opinion, be oontrary to law or morality.”
122
Ch. VI] UNFITNESS FOB EXERCISE OF PREROGATIVE
Indian Law.
There ia a provision under Section 25 of the Indian Act of
1911 whereby revocation of a patent can be effected if H. E. the
Governor General in Council declares by notification in the Gazette
of India that a “patent or the mode in which it is exercised” is
“mischievous to the State or generally prejudicial to the public.”
There is also a provision by virtue of Section 69 of the Indian Aot
of 1911 whereby the Controller of Patents is given power to refuse
to grant a patent “of which the use would, in his opinion, be
contrary to law or morality”.
There is no express provision under the Indian Act whereby
either illegality or immorality are made any ground of invalidity
either by way of defence to an action for infringement or by way
of support to an application for revocation : it is possible that
in such a case the point could be raised in support of a ground
of lack of utility.
The position is the same as in England under the English
Act of 1907 prior to its amendment in 1932.
Unfitness to be the subject of the exercise of the Crown’s prero-
gative.
In addition to the aspects of subject matter already discussed
there is one further aspect to be mentioned and one further test
which must be fulfilled. In certain exceptional cases it is possible
that a Patent will be unobtainable for want of subject matter even
though the alleged invention may have complied with all the four
tests already stated, that is to say, even theugh the thing sought to
be patented is a manner of manufacture aud comprises an inventive
step and is not for an illegal use, or a use contrary to morality.
For if it is for a class of article which is unfit to be the subject
of the exercise of the Crown’s prerogative, the grant of a Patent
may be refused on this ground alone. It follows that among the
tests required for subject matter a fifth test must be fulfilled in
regard to fitness on general grounds for the exercise of the Crown’s
prerogative.
Conclusion : Tests of subject matter.
To summarise the foregoing disoussion there are then, it is
submitted, five principal tests as to subject matter : vix : —
16
m
THE LAW OP PATENTS IN INDIA [Ch. VI
(i) Is the alleged invention a manner of manufacture in the
accepted sense of Patent Law ?
(ii) Is the alleged invention such that its creation has called
for the scintilla of invention or has there been an
inventive, step in the accepted sense of Patent Law ?
(iii) Is the alleged invention such that the primary or in-
tended use of it is not contrary to law ?
(iv) Is the alleged invention such that the primary or
intended use of it is not contrary to morality ?
(v) Is the alleged invention lit on general grounds to be the
subject of the exercise of the Crown’s prerogative ?
With these tests in mind it only remains to consider what
class of cases have failed for want of subject matter and in what
class of cases it has been held that no objection for want of subject
matter could be taken. For illustrations of such cases reference
may be made to the illustrative cases referred to below.
Cases.
An “Invention” is defined under Section 2 (8) of the Indian
Act of 1911 as meaning “any manner of new manufacture” and as
including “an improvement” and an “alleged invention”. The defi-
nition of an “invention” under Section 93 of the English Act also
defines it as meaning “any manner of new manufacture” the subject
of letters patent and grant of privileges within Section 6 of the
Statute of Monopolies and as including an “alleged invention”.
The cases in the United Kingdom relating to subject matter in
regard to the question whether any particular invention is a “manner
of new manufacture” commonly therefore make reference to the
definition under Section 93 of the English Act. The principles on
which these English cases have been decided will be none the less
applicable in India in relation to the same question which arises
here ; and in particular with reference to Section 2(8) of the Indian
Act of 1911.
As to Manner of Manufacture : —
A bare principle : or a mere plan : or scheme : or system : is not
patentable :
Cb. VI]
MERE PRINCIPLE NOT PATENTABLE
123
In the Matter of an Application for a Patent by James Yate
Johnson 9 .
The application for Patent was for a process of colouring
fertilizers and for the fertilizers so coloured. The Comptroller
had refused the grant. It was argued in support of the Comptroller’s
decision that the colouring amounted to no more than the equi-
valent of colouring inks, tickets, stamps and the like for the purpose
of distinguishing them one from the other. Held by the Solicitor-
General (Sir James Melville) on appeal from the decision of the
Comptroller : —
“After consideration of the arguments advanced, before me
and of the reported cases, I am satisfied beyond doubt that the
decision of the Superintending Examiner is a right one and should
be upheld. It is admitted that the addition of the colouring agent
adds nothing to the efficiency of the fertilizer as a fertilizer. Its
addition is merely for the purpose of avoiding confusion and ena-
bling different fertilizers to be readily distinguished by those who
use them, and especially by those who are not familiar with their
composition. I do not consider that such a step adds such a
characteristic to the vendible article as to constitute “a manner of
new manufacture’’ within the meaning of Section 93 of the Acts,
and I accordingly dismiss the appeal.”
Iu the Matter of an Application for a Patent by A. E. W . 7
In this case, on appeal from a refusal by the Comptroller to
grant a patent for an application claiming “an odometer for motor
vehicles and the like comprising one or more numeral wheels having
signals associated with certain numerals to be displayed therewith
upon completion, by the vehicle, of the mileage indicated by said
numeral and thereby advise the operator of the vehicle of atten-
tion, such as the lubrication of certain parts, periodically required
by the vehicle mechanism,” it was held by the Solicitor General
(Sir Henry Slesser) as follows : —
“In my view this case is really not distinguishable in principle
from W’s Application (1914) 31. R. P.C. 141. There it was sought,
by means of coloured buoys, to say whether a buoy was outside a
particular line of coast or not, that is, by painting a buoy red or
• (1930)47. R.P.C.361.
• (1924) 41. R. P. 0. 529.
124
THE LAW OF PATENTS IN INDIA
[Ch.VI
painting it bine or placing some other appropriate signal upon the
buoy. I do not think that the colouration of the odometer in this
ease, or the colouration of the buoys in W’s case can properly
be compared with some physical change such as shifting of a
known mechanism to another angle or to the class of case where
there really is a change in the mechanism as such. Here there is
nothing more than colouration or some other similar device. I
agree with the Assistant-Comptroller that what the Applicant seeks
to protect is in substance a plan or scheme for reminding the
driver that attention is required when certain distances have been
ran, and the method of colouring the odometer is merely one of
the means 'of effecting that plan of scheme. There are a number
of decisions which tend to the same conclusion. There is the case
of W’s Application which has been referred to, in which it was
said that mere methods of arranging well known objects are not
matters within Section 93, and there are also cases such as the
musical notation case (M’s Application, (1924) 41. H. P. C. 159)
where it was held that the mere addition of printed or coloured
matter by the side of a patented device such a pianola reel was
not in itself a patentable invention. I think that a very clear
distinction has been drawn between the present class of case, which
is merely no more than a plan or an idea for bringing certain matter
to the memory, and those cases in which there is really alteration
of mechanism such as the alteration of the safety guard on motor
omnibuses. For these reasons I hold that the Assistant Comptroller
was right and that this appeal must be dismissed.”
See also W. i VPs Application 8 (An application for a patent for
an alleged invention described as an educational appliance compris-
ing illustrated charts for exercises and gramophone sound records.)
Held there by the Solicitor-General (Sir Henry Slesser) : —
“I am of opinion that there is in fact no combination hero
at all, much less a patentable combination. There is at most a
mere collection of two matters, the record and the chart, within
the same room, and I think that it would be a misuse of words to
describe the mere collection or simultaneous user of two instru-
ments as a combination as that word is properly to be understood.
That being so, I cannot see how the mere joint user at the same
(1924)41. E.P.C.216
Ch. VI]
MERE PLAN OB SCHEME OB SYSTEM
125
time of two instruments, neither of which is in itself a proper
subject for a patent, can be brought within the principle governing
the grant of patents for combinations. Here there is nothing
more, as it seems to me, than a gramophone record on the one hand
and a chart on the other hand which may be used together, or which
possibly will be used together. For these reasons 1 am of opinion
that the Assistant-Comptroller was right in refusing to accept
the Application, and the appeal will be dismissed.”
See also P’s Application , 9 where the grant was similarly
refused, the following observations being made by the Solicitor-
General (Sir Henry Slesser) : —
“In this case a claim is made for producing printed sheets to
be used with a reflex copying apparatus, the ossence of the claim
being that the writing is printed backwards on a piece of paper,
and, on being used in the apparatus, acts as a guidance to persons
learning to write and draw. It is quite clear to my mind that the
article here is printed matter, and that no particular article of
manufacture is involved. I do not think it can be said that this
printed matter is necessarily ancillary to the copying apparatus ;
it appears to me to be of a general character. What is sought to
be patented here is no more than printed matter of a peculiar
kind.”
Compare also M’s Application, a very similar case 10 , in which
the following were among the observations made by the Solicitor-
General (Sir Henry Slesser) : —
“It was argued by Mr. Trevor Watson that this device consti
tutes an invention within the meaning of section 93 of the Patents
and Designs Acts, 1907 and 1919, but in my opinion when the case
is properly considered this device is no more than the printing of a
part of a score on a perforated reel. It is quite clear that the print-
ing of a score by itself cannot be construed to be an invention with-
in the meaning of Section 93, and in my opinion the fact that the
score or a part of the score, or a symbol showing what note is actually
played, is printed upon or near the slot in the instrument which
causes the sound to be played, does not take it out of the'gencral
principle that this is merely a method of printing musical notes. It is
» (1924) 41. B.P.0. 201
10 1924 41. B. P.0.159.
m
THE LAW OF PATENTS IN INDIA
[ Ch.yi
dear that the music produced ou the pianola or musical instrument
is in no way affected by the printing which it is proposed to put on
the music reel, and therefore this alleged invention does in my
opinion simply resolve itself into a new method of musical notation
although that musical notatiou I agree is collocated to the sounding
of a particular note.”
Compare R.IJ.C*s Application 11 where it was held that a cer-
tain scale or chart for map-reading was not in the circumstances of
.that case a manner of new manufacture. At the same time it was
observed (at p. 157) that the mere fact that the invention was in the
nature of a scale or chart was not conclusive against the applicant
for patent ; and on that point reference was made to C's application
(1920) 37. R. P. C. 247 at 248.
In It’s Application 12 the application for “improvements in and
relating to indexes” was held not patentable. Certain extracts of
the observations of the Solicitor-General (Sir Thomas Inskip) may
be cited : —
“The question which I have to determine in this case is that
which was stated by the Solicitor-General in Ward’s Case (which is
reported in 29 R. P. C. at page 79) whether what is sought to be
patented by the Applicant can be regarded as an invention within
the definition of Section 93 of the Patents and Designs Act 1907.”
“All that I have to consider is whether that which is
claimed by the Applicant is merely a scheme, an idea or a method ;
or whether it is a manufacture of which, applying the phrase which
was used by Sir John Simon in Ward's case, the utility is purely
mechanical."
“Mr. Bousfield contends that what is claimed to be an invention
in this case is an idea of itself, and he says that if you look around
and see the number of volumes in which the index which is the
subject of this claim is contained, you will see at once that you have
a very bulky subject matter, a physical object which is clearly a
manufacture, and that this particular index is therefore a manner
of manufacture within the meaning of Section 93. I have come to the
conclusion that the decision of the Assistant-Comptroller is exactly
the same as the decision at which I should have arrived if I had not
11 (1924) 41. R. P. C. 156).
19 (1923) 40. R. P. C. 465.
Ch. VI] MODE OF EXECUTING PRINCIPLE PATENTABLE 12?
been assisted by his view. I have to apply my mind to the facts of
this case with the aid of the three judgments of the Law Officers
to which Mr. Bousfield has referred. The fact that the idea embodied
in this index enables one to obtain a mechanical result and to obtain
something which is a manufacture like a volume or a series of
volumes is not in my opinion sufficient. I have to ask myself the
same question as Sir John Simon, when Solicitor-General, asked
himself in Ward's case, the same question which Sir Edward Carson
when Solicitor-General, had to ask himself in Johnson's case, and
the same question as the Attorney-General, Sir Robert Finlay, had
to ask himself in Cooper's case, namely : Is this a mere scheme or
idea — it is true reduced to writing ; or is it a mechanical manufacture
which can properly be said to come within the definition to which I
have referred ? In Johnson's case it was pointed out that it was
immaterial that a printed envelope was used, and in this case it seems
to me to be immaterial that a sheet of paper is necessary to convey
the idea which has come into existence in the mind of the Applicant
to the mind of the person who has to apply the idea so as to produce
a certain volume. The question which the Assistant-Comptroller
appears to have asked himself, and which I ask myself is : Is this
in itself a product of which the utility is mechanical ? I do not
want to use a new expression which may lead to greater difficulties
than those which already exist in deciding this class of case. I do not
for a moment say that this case is obvious apart from the guidance,
to which I have referred, from the three reported cases. It is just
the class of case which is likely to be the subject of appeal, as was
Cooper's case, Ward's case, and Johnson's case, but with the guidance
of the principles applied by the Law Officers in those cases I think
that this is not an invention within the definition which I have to
apply, and I therefore dismiss the appeal."
Compare Ward's Application 13 as to manner of manufacture
under Sec. 93 of the English Act of 1907), where it was held by the
Solicitor-General (Sir John Simon) that a certain system of indexing
was not patentable. 14
A mode of carrying a principle into effect is patentable. A mecha-
»» (1911) 29 R. P. C. 79.)
14 See also (1911) 43 R. P. 0. 154 where it was held in effect that the
fact that the method (or scheme) produced a vendicle manufactured article was
immaterial.
128 THE LAW OF PATENTS IN INDIA [Ch. VI
nical combination is patentable (none the less if it be for
furthering a plan, scheme or system)
In the Matter of an Application for a Patent by Companies
Rennies des daces et Verres Speciux du Nord de la France . 1B The
application for patent was for a combination of or method of mount-
ing of known parts as an unbreakable windscreen. The Comptroller
had refused the grant on the ground that there was no manner of
new manufacture and no exercise of the inventive faculty. Held by
the Solicitor-General (Sir Stafford Cripps), on appeal from the
Comptroller s decision, that there was on the face of the specification
a “manner of new manufacture” and that it could not be said that
there was no “invention” ; and the appeal was allowed.
With A.E. W*s case abovementioned may be contrasted the case
of A. W. Lotlris Application reported in the same volume 16 where
it was held that there was a novel combination, it being observed
by the Solicitor-General (Sir Henry Slesser) as follows : —
“I think it is straining language to say that you have not in
this case a combination. If that be so, it seems to me that the
authorities are all in favour of the Appellant. This case seems to
me clearly distinguishable from the case of W's Application (1914)
31. R. P. C. 141), the case of the buoys which was really a case of
mere notative indications on the buoys. Here you have a specific
invention depending upon the specific discovery of the form of the
field of electric force finding expression in a specific complex of
apparatus for the detection of that force. I agree entirely with
•what was said by the then Solicitor-General in that case, that mere
systems of arranging well-known objects are not matters which come
within Section 93, but what is suggested here is considerably more
than a mere system of arranging well known objects, and at least
one of the objects physically realised in this invention is based
upon a novel discovery. In the present case, construing the claim
reasonably, it is contemplated that these frames will either be
permanently fixed or kept in defined positions by some contrivance.
It is quite impossible that either the line of the axis of the crossed
frames or the proper position of the side frames can possibly be
accurately maintained on a moving body like a ship by merely
lfl (1931) 48. R. P.C. 185.
0 (1924) 41R. P. C. 273.
Ch. VI]
MECHANICAL DEVICE
129
laying the frames upon the deck, for it is vital in pilotage that the
absolute accuracy of position of the frames should be preserved.
The whole discovery, therefore, consists of one complex of apparatus
for correct navigation, and in my opinion, the Assistant Comptroller
was wrong in refusing to accept this application. I think it is
properly a manner of new manufacture within Section 93, and I
order that the Specification be accepted accordingly.”
As another illustration of a case falling on this other side of
the line, where the Patent asked for was granted, reference may be
made to a well known case decided under the English Act of 1883
but on the same question of what constituted an invention in the
sense of a manner of manufacture : Cooper’s Application . lT As is
stated in the report of the case, it had been the practice of the
Comptroller-General, after consultation with the Law Officers as
to the meaning of the definition in Section 46 of the Act of 1883 to
hold that although the last five words ( i.e . the words “and includes
an alleged invention”) excluded all enquiry (at the particular stage)
by him into the novelty of any alleged invention, they did not
relieve him from the duty of satisfying himself that what was sought
to be patented was an invention relating to some “manner of manu-
facture” within the Statute of Monopolies. In these circumstances
the decision in the case of the Attorney General (Sir Robert Finlay),
in common with the other decisions in the cases here collected,
given at the stage of appeals from a refusal of the Comptroller to
grant a patent, is of particular interest as being directly on the
point as to what constitutes a manner of manufacture without any
consideration of the question whether or not it is new. The alleged
invention in that case consisted in leaving a space across the printed
page of a newspaper to enable a person reading it to fold it along
those spaces and thus avoid the trouble involved in reading over
the folded part of the paper. The following extracts from the
decision given by Sir Robert Finlay in the case will be of interest :
“A man could not ask for a Patent to be granted to him for a
literary composition. That if anything would be the subject of copy-
right. In order to ask for a Patent a man must oome forward saying
that he has some invention with reference to a manufacture. You
cannot have a patent for a mere scheme or plan — a plan for becom-
ing ric h ; a plan for the better Government of a State : a plan for
7 (ifloi) 19. R. p. o. 53.
17
THE LAW Or PATENTS IN INDIA
[Oh. n
-130
the efficient conduct of business. The subjeot with reference to whioh
you must apply for a patent must be one whioh results in a material
product of some substantial oharacter. The Specification must
show how some such material product is to be realised or effected
by the alleged invention Now I take it that that points to a class
of oases of which anyone who has followed the history of invention,
in this country must have had experience where a man has attempted
to take out a Patent for what is really a plan for the conduct of
some branch of business, a plan for co-operative trading, a plan for
securing the payment of discount in a particular way, and various
other plans of that sort, which it is not the least necessary to refer
-to in detail. Now in furtherance of his application for a Patent
for such plans he might propose that it should be carried out by
virtue of a ticket containing printed matter arranged in a particular
way so as to express what is to be done, or to enable the holder of
that ticket, or coupon, or whatever it may be, to take his part
properly in the development of the plan which the Applicant thinks
he has invented and believes to be of public utility ; and this direc-
tion I take to mean this : that the mere fact that one feature in
the scheme was a printed sheet, . or coupon, or ticket, or any equi-
valent, the invention being alleged to be an arrangement of words
upon the sheet, would not form a subject in respect to which a
Patent might properly be granted, because it would not be manu-
facture ; in substance it would be a scheme, and the mere arrangement
of printed matter in connection with such scheme would not prevent
you from looking at the real objeot of the Applicant. To my mind
the present application is of a different kind, and is not obnoxious
to the direction on which so much comment has been bestowed.
The present Applicant in no way proposes to arrange printed matter
for its more convenient use from a literary point of view. What he
proposes is a particular way of manufacturing a newspaper; and
the alleged utility of his supposed invention is purely mechanical.
It in no way is analogous to the arrangement of an index, or the
arrangement of any other production of a literary kind, which may
enable the reader more readily to appreciate the sense of the author.
His proposal is not a proposal with reference to the arrangement
of words upon the newspaper. His proposal is that a blank space
should be left down the middle of the newspaper. The advantage
of that is said to be the mechanical advantage that when you fold
Ch. VI]
COUNTER AND BOARD GAMES
131
your newspaper yon will probably fold it down the middle either
way, and then yon will not interfere with any printed matter, and
yon will be able to read the newspaper more easily and more com-
fortably The question which I have to determine is
for this purpose, I think solely whether this application relates to
manufacture. I feel constrained to come to the conclusion that it
does. There is no doubt that a newspaper is an article of manu-
facture. It is an artificial product, Mr. Cooper alleges that by
following his directions, and leaving a blank space in the middle of
the page each way, you will render it physically much more
convenient for use than by printing it in the way hitherto accus-
tomed. I do not see myself any difference, from the point of view
from which I now am dealing with this matter, between such an
application as this and an application relating to a proposal for so
binding a book that it opens comfortably and conveniently for the
reader, so that there should be no difficulty in unfolding it so
completely that he would have the whole of each page lying fiat
before him, instead of being curved, and almost concealed, as it is
in some old-fashioned methods of binding. There may be a vast
difference in the utility of the two processes, but in point of
principle it seems to me that the one must be regarded as a manu-
facture just as much as the other. Upon the whole, while I
must repeat that I do not think that this case decided any
question of principle, because the only point that has been argued
is — whether the particular alleged invention satisfies the test to
which the Comptroller referred to in his correspondence with
Mr. Cooper, I must say that I have come to the conclusion that
I think Mr. Cooper may have his Patent if he so desires".
Regarding an application for a Patent in connection with
counter and board games. The following official ruling was given by
the Comptroller 18 : —
“The question having arisen upon an Examiner’s Report
whether a patent for a game of the above character should be refused-
where the only novel feature (apart from the rules of the game) lies
in the particular character of the marking upon the board, the follow-
ing Ruling was given : —
“It may be stated generally, that where the claim made in
18 (1926) 42. R. F. G. Appendix A (p. i).
132
THE LAW OF PATENTS IN INDIA
[Ch. VI
oases such as this is to apparatus for playing a game, comprising
one or more playing pieces and a board marked in a particular
manner substantially as shown in drawings accompanying the
Specifications, the playing piec9 or pieces being moved in accordance
with directions furnished in the Specification as to the manner in
which the game is to be played, the requirements involved by the
definition of an “invention” contained in Section 93 of the Acts will
be held to be complied with, and the application will be subject only
to such objection as may arise under Section 7 or otherwise in the
normal procedure of examination.”
Manner of manufacture : Mere discovery is not patentable : —
In Hamilton Adams's Application 1B the application for
patent related to “improvements in and relating to agricultural
processes” and was in connection with the rotation of crops.
It was held that the matter was a discovery and not a paten-
table invention. The decision of the Solicitor-General (Sir
Gordon Howart) on appeal from the refusal of the Chief
Examiner who had refused to grant a patent was to the following
effect : — “If I thought that the difference between the Applicant and
the Chief Examiner in this case was a mere question of words, I
should have no difficulty in arriving at the conclusion that the
Applicant desires. But I am satisfied that the difference is one of
substance. The conclusion to which the Chief Examiner came was
this, “that the alleged invention is in reality “a mere discovery, and a
mere discovery is not in itself sufficient to justify the grant of a
Patent” ; and that “there is not in addition to the discovery any
improvement in the method of carrying out any agricultural
operations.” My attention has been directed to two cases. The
first was the case of Lane- Fox v. Kensington and Knightsbridge
Electric Lighting Company Ltd ., in 9 B. P. C. 413. Lord Justice
Lindley, in giving judgment (at page 416) said : — “An invention
is not the same thing as a discovery. When Volta discovered
the effect of an electric current from the battery on a frog’s leg
he made a great discovery, but no patentable invention. Again
a man who discovers that a known machine can produce
effeots which no one knew could be produced by it before may
make a great and useful discovery, but if he does no more — his
discovery is not a patentable invention. He has added nothing but
»• (1918) 35. E. P. C. 9a
Ch. VI]
MERE DISCOVERY NOT PATENTABLE
133
knowledge to what previously existed. A patentee must do some-
thing more : he must make some addition, not only to knowledge,
but to previously known inventions, and must use his knowledge and
ingenuity so as to produce either a new and useful thing or result.
In the case of Reynolds v. Herbert Smith c& Co. Ltd. reported in 20
R. P. C. 123, Mr. Justice Buckley, as he then was, in giving judgment
said ( at page 126 ) : — “Of course the difference between discovery
and invention is very familiar.” No doubt it is very familiar, al-
though it may not be very easy to define in precise terms. I am not
satisfied, in spite — if I may say so — of the extremely interesting and
learned argument which I have heard, that there is anything here
whioh can properly be called an invention, and I think that the
decision of the Chief Examiner must stand, for the reasons
which he assigns in his decision. The result is that this Appeal is
dismissed.”
In the Matter of an Application for a Patent by W. L. 20
The application was for an alleged invention for “Improve-
ments in and connected with route-indicating phonic cables” ; which
concerned a method by which the positions of ships at sea should
be enabled to be ascertained. The Comptroller had allowed claims
Nos. 3 & 4 of the Specification and granted a Patent in respect of
those claims but had refused the grant in respect of claims Nos.
1 & 2 .
On appeal to the Solicitor-General (Sir Henry Slesser) in respect
of the decision as to claims Nos. 1 & 2, it was held that there was
no novel combination, and there being nothing more than “the user
of known instruments according to the dictates of common sense”,
there was no new manner of manufacture.
Similarly in another case In the Matter of an Application for
Patent by A. L. 31 it was held as following : —
“What is claimed in this Claim appears to me not to be in the
nature of an invention, but merely the discovery of a more expedient
method of operating an old device, and is oovered by the judgment
of the Law Officer in the Application of the Deutsche Gasgluhlicht
Aktiengesellschaft ,(26. R. P. C. page 101). There it was discovered
that a direct current would produce a better result than an alter-
*° (1924) 41. R. P. 0. 617. ~~ ’ ~
* 1 (1984) 41. R. P. 0. 615.
THE LAW PATENTS IN INDIA
[Ch.VI
134
nating current in connection with a filament. Sir William Robson,
then Attorney-General, said that this 'was a discovery rather than
an invention, and did not add anything to what was claimed by the
Opponent. With regard to the second Claim which reads : “an embo-
diment of the improvement claimed in Claim 1, characterised by the
feature that the constant direct current sent into the cable is
produced simultaneously with high frequency electro-magnetic
waves, emitted by a station of wireless telegraphy ; these electro-
magnetic waves of high frequency producing in the receiving frames
currents that act by induction upon a radiogoniometer frame in a
known manner/' I agree that this is merely a method for using
known apparatus iu a new manner, and indeed is at most a method
of navigation rather than a manner of manufacture. For these
reasons 1 think the Assistant Comptroller was right in refusing to
accept the Application, and the appeal will therefore be dismissed."
In the Matter of an Application by Louis Renault 22 (regarding
an application for a Patent in connection with a centrifugal oil
purifying machine). The main question was whether the invention
had been previously published or made available to the public. In
considering that question a point arose as to whether there was a
substantial part of the alleged invention applied for which was new.
On this point the following observations having a bearing on the
present point now under discussion as to what constitutes “inven-
tion”, were made : —
“To say that, when the whole essence of the invention has
already been discovered, the Applicant may succeed, because he has
discovered certain additional advantages in what some former
inventor has done, does not seem to me to be justified by the
language of section 11 (1) (b). The whole of the invention sought
to be patented has been published, none the less so because it
contains certain advantages which are not disclosed in the prior
publications.”
Manner of manufacture : Discovery of new purpose for old matter
is not patentable : —
In the Matter of an Application for a patent by James Yate
Johnson 88 application for Patent was in regard to an alleged im-
~ ** (1924)~4iTe. P. CJ34& '
*> (1930) 47. R. P. 0. 178.
Oh. VI] DISCOVERT OF NEW PURPOSE FOR OLD MATTER NOT PATENTABLE 185
•
provement in the manufacture of acetaldehyde. The Comptroller had
refused the grant on the ground that the alleged invention was
merely a non-patentable discovery. Held by the Solicitor-General
(Sir James Melville), on appeal from the decision of the Com-
ptroller, that the Comptroller was right ; and held that “the discovery
that a known thing can be used for a useful purpose for
which it has never been used before is not alone a patentable
invention.* 4 ”
In B. It’s Application 26 the application was for a process (or
alternatively, on a suggested amendment, for an apparatus) for
enriching with carbonic acid the atmosphere that envelops plants,”
the following observations were made by the Solicitor-General
(Sir Thomas Inskip) : —
“Mr. Evans told me that the means, or what is called the
mechanism in the Specification which are to be used for the purpose
of gas purifying such as dust filters, oil separators washers, and the
like are admittedly old methods or mechanisms. Therefore there
is no new product, no new method of manufacture suggested, nor
an old one improved, and under those circumstances the case
appears to me to be very like the case of B.A’s application (1915)
32. R. P. C. 345 in which Sir Stanley Buckmaster, the Solicitor-
General, expressed an opinion with which I respectfully agree — and
even if I did not agree with it I think it is an opinion which is
now old enough at any rate to be followed — where he says, at page
349, line 38 : “It cannot be disguised that that is its purpose, and
I still say that I regard it as one of the well established principles
of Patent Law that when once a substance is known, its method of
production ascertained, its characteristics and its constituents are
well defined, you cannot patent the use of that for a purpose which
is hitherto unknown.”
“It is said that the combination of the purification, the means
of conveyance and the green-house where the plants are to be
treated constitutes a new invention, but, as I understand the law,
the mere juxtaposition of a number of features is not suoh as to
make a new invention ; you must have something more than
juxtaposition ; you must have an organic combination which is to
Bee also (1892) ». R. P. 0. 413 at page 416.
»• (1923) 40. R. P. C. 469.
186
THE LAW OP PATENTS IN INDIA
tCh. VI
produce some result. In this case I have listened very oarefully
to the argument of Mr. Evans, but according to the view I have
expressed there is no new product, no new method, no improvement
on an old method, and no new combination of such a character as
to make this Claim a good one, and I must therefore, dismiss the
appeal” 2 \
A. F’s Application 27 (as to manner of manufacture under Sec-
tion 93.) The alleged invention for which a Patent was asked was for
the use of a well known substance as an insecticide, such use being
new. The observations of the Solicitor-General (Sir Stanley O.
Buckmaster) have resulted in the case being treated as a leading
case : he said : —
“The real question, therefore, is whether it is open to dispute
that the description in Claims 1 and 2 of the Specification can
cover what is known as an invention. In my opinion they cannot.
It is an old and a well-established principle that the mere discovery
of a new use of a particular known product is not what is meant
by invention within the meaning of Patents Acts. It is outside the
area which these Acts cover, and although in certain cases difficul-
ties may arise when an old article or process is described for use
in connection with a new manufacture, yet I can nowhere find any-
case that throws doubt on the proposition that where by the alleged
invention no new product is obtained, no new method of manu-
facture suggested nor an old one improved, the discovery cannot
be protected by a grant of Letters Patent. In the present case
none of these merits are claimed ; it is only suggested that the new
use of a known product will thereby stimulate the old method of
manufacture which is to be carried on in the old way”. The appeal
from the decision of the Chief Examiner acting for the Comptroller-
General was dismissed and the Patent refused.
Contrast : — new combination of application of known process and
known product : —
. In the Matter of an application for a Patent by 1. 0. Ferbenin-
dustrie Aktiengesellschaft 1 8 The application for Patent was for im-
' a • Compare also (1923) 40. E. P. 0. 467.
i »’ (1913) 31. R. P. C. 58.
* (1929) 46. B. P. C. 271.
Ch. VI]
A DISTINCTION
137
provements in the manufacture and production of rubber tyres. The
Comptroller had refused the grant. The decision being important
the following extract is of interest. Held by the Solicitor-General
(Sir Boyd Merriman), on appeal from the decision of. the Comptroller
— “Put into non-tcchnical language, the invention appears to consist
in taking a known chemical substance and submitting it to a known
process for producing what the Applicants claim to be a new result.
As is so often the case in appeals under this Section,
much of the argument was directed to the fact that in these proceed-
ings I am not entitled to consider subject-matter, and, whilst broadly
speaking this is true, I must of course consider subject-matter to the
extent of determining whether an article for which protection is
sought comes within the scope of what is known as “invention.” It
will not, I think, be disputed that both the Comptroller and the Law
Officer have inherent powers to refuse the grant of a Patent, and
these powers may properly be exercised in cases where upon the face
of the Specification the alleged invention is one which, having regard
to ordinary common knowledge, is neither new nor patentable. (See
Comptroller-General's Ruling in WainwrighVs Case (29. R. P. C.,
Appendix p.xi) ; The King vs. Comptroller- General of Patents ,
exparte Muntx , 39 R. P. C. 335 ; and D . A . (& K*s Application (43
R. P. C. 154). I have read the reported cases to which my attention
was called at the hearing, and indeed I have looked at most of the
decisions given under Section 93. I observe from these that patents
have been refused for the use of a known substance (a) as an insecti-
cide (A. P's Application, 31. R. P. C. 58) ; (b)as a fertilizer (B. A's
Application, 32. R. P. C. 348, and C. G. R's Application, 42. R. P. C.
320) ; (c) as fuel for internal combustion engines (D's Application,
38. R. P. C. 397). In all these cases the most the applicants had
done was to discover a new use for an old substance. In my opinion,
however, different considerations arise where the alleged invention
consists not simply in applying a known product to a known use,
but in subjecting a known product to a process which, as a process,
is already known but the application of which to the product in
is alleged to be novel. In my opinion where this is the case it cannot
truly be said that the resulting substance is the old substance, even
though the article ultimately produced is a familiar article. In this
oase the Comptroller is saying in effect that butadiene is known as a
chemical substitute for rubber ; that the process of producing a
18
138 THE LAW OF FATENTS IN INDIA [Ch. VI
motor tyre by vulcanising rubber is known ; therefore to subject
butadiene to the same process in order to produce a tyre is, at most,
finding a new use for a known substance. The Applicants, on the
other hand, say that the vulcanisation of butadiene in such a way as
to produce the requisite elasticity is a new idea or a manner of new
manufacture of motor tyres. They contend that the conversion of
butadiene in a motor tyre by an appropriate process of vulcanisation
is not the application of a known material either to a known or to
a new use, but is rather the production of a new material in a form
adaptable to a known use. I think that this contention is right. For
the purposes of this decision, in the absence of any evidence to the
contrary, I am bound to assume the novelty of this particular process
of vulcanising butadiene. It seems to me to be quite irrelevant to
say, as is no doubt the fact, that the application of the same procees
of vulcanisation to real rubber will produce a motor tyre, or that the
application of another process of vulcanisation to butadiene will
produce other articles, if it is assumed, as I do assume, that the
vulcanising of butadiene into an article having the qualities of a
motor tyre is novel.
Great reliance has been placed by the Comptroller on the
passage in Sir Stanley Buckmaster’s Judgment in B. A's Applica-
tion, 32 R. P. C. 349, at line 37 : “In the present case there is
nothing but a claim for a new use of an old substance. It cannot
be disguised that that is its purpose, and I still say that I regard it
as one of the well established principles of Patent Law that when
once a substance is known, its methods of production ascertained,
its characteristics and its constituents are well defined, you cannot
patent the use of that for a purpose which was hitherto unknown.”
If I thought that this passage correctly described this claim I should
unhesitatingly follow it. But I do not. On the contrary, I think
that this case comes directly within the next succeeding passage
(line 42). “You can, undoubtedly, associate it with any other material
you like, and, by that means, obtain a new product for which you
may claim protection, and if the applicant had sought to associate
this urea nitrate with the certain well kuown forms of earth and had
declared that by that means he got a certain manure, which conld
not be got if you associated it with different forms of earth, and that
he was seeking to sell the earth so fertilised, that would be a totally
4%|erent thing”* I see no distinction in law* as a manner of new
Ch. vq
MEDICINES
139
invention, between associating the known substance, urea nitrate,
with certain well known forms of earth and subjecting the known
substance butadiene to a well known process of vulcanisation. If
the one produces a patentable invention so, in my opinion, does
the other.”
Manner of Manufacture : Medicines.
Ordinarily medicines and pharmaceutical compositions will
be held not to constitute an “invention” or a “manner of new manu-
facture” within the meaning of Sec. 2(8) of the Indian Patents and
Designs Act. 28
Since there is no provision in the Indian Act corresponding to
Sections 38 A of the English Patents and Designs Acts 1907-1932,
the position under the Indian Act is not altogether clear and is some-
what unsatisfactory. It would appear that a mere mixture is
patentable in British India, though such as could not be patented in
the United Kingdom.
Manner of Manufacture : Manufacture to be in some way asso-
ciated with commerce and trade : —
A curious case which illustrates a somewhat different aspect
of the connotation of the words “manner of manufacture” is the
following : — C <& IPs Application 29 .
The application there was for a patent in respect of a process
for extracting metals from living human bodies, and particularly for
extracting lead from persons suffering from lead poisoning. On an
appeal from the decision of the Supervising Examiner acting for the
Comptroller-general who held that the alleged invention was not a
manner of manufacture within Section 93, the Solicitor-General (Sir
Stanley O. Buckmaster) in the course of his decision upholding the
decision of the Examiner made the following observations : —
“I think it desirable that I should state a little in detail the
reasons which have led me to this conclusion. By Section 93 of the
Patents and Designs Act of 1907 an “invention” is stated to be “any
manner of new manufacture the subject of Letters Patent and grant
** See the Patent Office Handbook 5th edn. p. 118.
” 1914 31. B.P. C. 235.
140
THE LAW OF PATENTS IN INDIA
[Ch. VI
of privilege within Section six of the Statute of Monopolies.” Now
the Statute of Monopolies declared and enacted that grants of
monopolies should be void, and Section 6 of the Statute contained
provisions excluding from this general declaration “any Letters
Patent and grant of privilege, for the term of fourteen years or
under, hereafter to be made, of the sole working or making of any
manner of new manufactures within this realm.” In point of fact
that does not afford any satisfactory definition, because it simply
repeats the phrase “new manufactures” but it repeats it in a new
position, and it shows that what is meant by “new manufactures” is
something associated with the manufacture or sale of commercial
products as I think is made clear by the latter words of Section 0,
which say, “so as also they be not contrary to the law nor
mischievous to the State, by raising prices of commodities at home, or
hurt of trade, or generally inconvenient.” I think therefore we must
start with the assumption that an invention within the meaning of
the Patents Act 1907, is an invention for a manner of new manu-
facture that is in some way associated with commerce and trade.
It is quite plain that that docs not merely mean that it must be a
product. A maimer of new manufacture may be a thing newly made,
or a substance which, if made before, is improved in its manufacture,
or, quite apart from that, it may be a machine or a process that can
be used in making something that is, or may be, of commercial
value. If I am right in that view, .. the question which I have to
consider is whether the process described in the present Specification
is something to be used in the making of an object that is or may be
of commercial value or is a process adapted to that end. I find it
difficult to see that it is. It is in fact a process by which certain
well-known electrical apparatus is to be applied for the purpose of
extracting lead from living objects. Further I think, on a true
reading of the Specification, those living objects are meant to be
human beings. So far as human beings are concerned, it canuot be
suggested that the extraction of lead from their bodies is a process
employed in any form of manufacture or of trade, though the
human being may be a better working organism when the lead is
extracted.
Then it is said it might be applied to other animals. That is
so, but, in my view, that is not what the Specification cantemplates ;
if it were an Application simply for the use of the prooess for the
Ch. VI]
BIO-CHEMICAL PROCESS
141
purpose of removing lead from animals in order to make them better
malic et able products it might be that different considerations would
apply. My judgment is not intended to exclude any such Applica-
tion ; it is merely intended to cover this, that the application of a
process for the removal of either lead or other noxious substance
from the human body is not, by itself the subject matter of invention
within the meaning of the Statute. I notice that the Patent Office
have based their refusal upon the ground that the alleged invention
relates simply to medical treatment, and I think that the foundation
for that refusal is sound.
T have only to add this. It has been urged and I think quite
rightly, that the question of humanity ought not to affect the decision
in such a case as this. I agree. Of course, it is well known that the
medical profession do all in their power to discourage members of
their body from obtaining protection for any discovery that has for
its object the alleviation of human suffering, and it is impossible to
speak too highly of such conduct, but it cannot affect my judgment
in arriving at a conclusion upon the terms of the Section of the Act
of Parliament, and I have altogether excluded such considerations
from my mind. For the reasons I have given I think that this
appeal should fail. I repeat, if the Applicant desires to apply for
something applicable to merchantable articles like sheep and cows,
that may be the subject of different considerations.
Manner of manufacture : patent for a bio-chemical process :
plant patents.
The first instance (and an interesting example) of a case relating
to a Patent for a bio-chemical process founded on researches in
bacteriological chemistry to come before the Courts in England was
that of Commercial Solvents Corporation v. Synthetic Products Co.
Ltd. 30 ; in which a patent for a process of fermentation by specially
selected bacilli was upheld, the suit being a suit for infringement.
There appears to be no reported case in the United Kingdom
of a patent having been granted for the production of a new species
or type of an agricultural or horticultural plant. It is tentatively
submitted that a case might arise, where a particular type of plant
was the result of a particular scientific process of selective crossing,
»° (1920) 43 R. P. C. 185.
142
THE LAW OF PATENTS IN INDIA
[ Ch» VI
in which the invention might be held to be a manner of new
manufacture and patentable. There would seem in theory to be
little difference between such a biological process resulting in
an agricultural product and a bacteriological process such as
was patented in the case abovementioned. 31
Alleged invention : —
When deciding whether a thing is a manner of new manufac-
ture within Section 93, as to the force to be given to the words
which occur in that section “or an alleged invention” — the position
taken up by the Comptroller in England and on appeals from his
decisions by the requisite appeal tribunal has now become well
established. It was well put in the case of W’s Application 82 .
The application was for a patent in respect of a certain manner of
use of buoys for navigation purposes. The material observations
of the Solicitor-General (Sir Stanley O. Buckmaster) were as
follows : — “Again Mr. Justice (Counsel for Appellant) said, none
the less it may be an alleged invention, that is to say, it may be
an alleged new manufacture. It is necessary that I should explain
what I understand those words in the section to mean. I under-
stand them to mean something which is alleged as manner of new
manufacture, even though, in fact, it may not be a new manufacture,
though if you take the allegation as it stands it would appear to
be a new manufacture. If, however, something is not, and, as
alleged cannot be a manner of (new) manufacture, it cannot possibly
entitle you to protect it under Section 93 merely because you
have said that it is. You cannot make black white by calling
it white ; it still remains black, and if you are once quite satisfied
that what is referred to is not the subject of invention it cannot
be turned into one by saying that it is. Therefore, I think the
words “alleged invention” do no more than relieve one from the
necessity of seeing whether it has been covered before by other
Patents, whether it is a matter of common knowledge, or something
al Patents are available in the United States of America for the production,
by scientific selection and crossing, of new species or types of agricultural or
horticultural plants. It is understood however that this is not owing to any
distinct interpretation in the U. 8. A. of the term “manner of new manufacture,’*
but by virtue of special legislation for the purpose.
»• (1914) 31 R. P. C. 141.
Ch. VI]
MEANING OF “ALLEGED INVENTION"
148
of that kind. You cannot turn into an invention that which, from
its nature and character, cannot be invention by alleging that it is
one. I take the view that this case is within those which have
decided that mere systems, more convenient methods of arranging
well-known objects so that you may have them handy for reference,
are not matters within Section 93. No one of the Claims in this
Specification covers what is, in my opinion, meant by the word
“invention” as used in the Statute, and, although no reason is given
in the Chief Examiner's decision, I should imagine that that was
what induced him to refuse this application and I must support
his decision and dismiss the appeal.”
It may be assumed that the Controller of Patents in India will
adopt the same principles. 33
It is possible that the words “alleged invention” were inserted
in Section 2(8) with the object merely of assisting in giving effect to
certain portions of the Act, as for example such passages of the Act
as relate to the making of an Application for a Patent in Sec. 4,
where the applicant is enjoined to describe the nature of the “inven-
tion” in the specification. For it is immaterial for the purpose of
Sec. 4 whether what the Applicant thinks to be an invention is in
Patent law in truth an invention or merely an alleged invention.
Compare also the following case where the same matter was again dis-
cussed viz., S’s Application . 84 The alleged invention there consisted
of having on one side of a gramophone disc a music record and on
the other side a spoken record in explanation or description of the
music. It was held that this was a mere system which was not a
manner of new manufacture. The decision of the Solicitor-General
(Sir Thomas Inskip) which states certain principles of interpretation
of the term “manner of new manufacture” may be cited here in
full
“In this case the Supervising Examiner has declined to accept
the Application on the ground that the alleged invention is not .a
manner of new manufacture within Section 93 of the Patents and
Designs Act, 1907. It is contended by Mr. Moritz on behalf of the
Applicant that the refusal to accept the Application on the ground
m gee also (1922) 39 R. P. C. 335 at p. 339.
> 4 (1929) 40 R, P. C. 461.
144
THE LAW OF PATENTS IN INDIA
[ Ch. VI
that the invention was not a manner of new manufacture proceeded
upon the view that, inasmuch as doublesided discs had been well
known before the Specification in question here, the Specification
did not state a manner of new manufacture, the alleged invention
being merely the substitution of spoken words on the reverse side
of the disc explanatory of the music for what generally are musical
records. It is contended that that conclusion has been arrived at
by separating the word “new” from the word “manufacture”
and considering first of all whether it is a manufacture and
then secondly whether it was new, and that, it being admitted that
it is a manufacture, it has been held that it is not new, and therefore
it is not a manner of new manufacture. I am not clear that that is
exactly the way by which the Supervising Examiner arrived at his
decision, nor do I think that the proper interpretation of those words
is to be arrived at by separating the words, and considering the
word “new” as apart from the word “manufacture” and by saying
that the only question the Comptroller has to consider is “manufac-
ture” and that “new” is something that has to be postponed to a
future date when the Comptroller has come to the conclusion that
it is a manner of new manufacture within the meaning of Section
93 of the Patents Act. I think the words “manner of new manufac-
ture” must be read as a whole, and if the subject matter of the inven-
tion is merely the re-arrangement or adoption of a plan or of a
system which cannot, properly shaking be said to be a new manu-
facture, then it is not a manner of new manufacture within Section
93 of the Act.”
As to the scintilla of invention : inventive step.
It is merely necessary to observe that the phrase often used in
the cases “an inventive step” does not refer to any step by which the
inventor achieved his invention but to the step of addition to
previously known inventions comprised by the invention itself. In
some cases by reason of the very nature of the thing sought to be
patented it is possible to say that it is not an “invention” without
considering at all the degree of public knowledge existing before
the discovery of the thing sought to be patented. In many cases,
probably the majority of cases, particularly those relating to improve-
ments, it is necessary to consider the difference in public knowledge
before and after the so-called invention and to consider how far this
Ch. VI]
INVENTIVE STEP
145
difference constitutes an “inventive step.” It will be noted that in
exercising this mental process the question of novelty as such is
excluded : for the step may well be new without being inventive in
the sense used in patent law.
See Tomlin v. Acme Engineering Co., Ltd . 25 This was an action
for infringement during which a defence of invalidity was raised,
inter alia, on the ground of want of subject matter. The defence
succeeded ; and the patent was held invalid for want of subject
matter on the principle that there was no sufficient inventive step
in the alleged invention. The alleged invention was in regard to
“improvements in and relating to Fish Cookers” and related to a
means of ventilation in the Hue which was claimed to eliminate fumes
and to have other advantages as in the prevention of the accumula-
tion of fat, grease and soot. The point now under consideration is
dealt with in the following passages in the judgement of Farwell J.
(at p. 126) : —
“The first question that I have to consider is whether the
Patent is valid. The real crux of the whole of this part of the case
depends upon whether there is sufficient subject matter to support
this Patent.
The invention or the alleged invention consists, as I understand
it, of a cooker in which there is a single flue, in which flue there is
a fan. As I have already said and as in fact is admitted in the
Specification itself, a downward flue is nothing new. The insertion
of a fan inside the flue is something new ; that is to say, so far as the
evidence before me goes, that particular device had not been adop-
ted before. It is said that the evidence establishes that there had
been for long a great desire on behalf of persons interested in this
trade to get a cooker which would get over the difficulties which I
have pointed out ; that I must assume, because there is no direct
evidence about it that many persons engaged in the art had all
sought a solution of those difficulties, and that this invention or
alleged invention solved the difficulties, because the result of
cookers being made in the way described in the Specification has led
to great success for that particular form of cooker.
That it was known that with the use of cookers with an
i§ (1934)51R.P.C.U7.
19
146 THE LAW OP PATENTS IN INDIA [Ch. VI
upward flue there were the dangers or disabilities pointed out in the
Specification is not in doubt.
It is said that there is evidence before me that persons
interested in this matter were seeking a solution of those difficulties.
The evidence is not every impressive. One gentleman did say that
there were these difficulties, and that people were looking for a
means of getting over them ; but how far persons of engineering
skill had really turned their minds to a problem which, after all, is a
comparatively small one (by which I mean that the trade is a small
trade, and the problem is not one which is likely to excite the interest
of any very large number of skilled engineers), or how far there was
any real attempt on the part of persons skilled in the art to solve
this problem, if there was a problem, i9 not very clear, nor is the
evidence on the part of the case at all satisfactory. I will assume
that there was a problem to be solved, and I will assume that
persons were seeking to solve it. But even assuming that, as only
one cooker constructed in accordance with the Specification, that is
to say, with this single flue, was ever made, and the whole of the
evidence as to the success of the cookers is in regard to cookers
which are not made in that way, that evidence appears to me to be
quite useless for the purpose for which it is sought to be used. There
is, in my judgment, no such body of evidence as ought to lead me to
come to the conclusion that there was a serious problem to which
persons’ minds had been seriously devoted, that those persons had
failed to solve the problem, and that ultimately this solution was
found, which at once was such a commercial success as to illustrate
the fact that there must have been sufficient subject-matter to
support this Patent. I can well understand that, if a solution to a
problem has long been sought, that many persons have tried in divers
ways to solve that problem and have failed, and some one comes
along and solves it by a means which, when the solution is presented
to the world, would seem to be quite obvious, the mere fact of that
long research and failure and the commercial success attending upon
the invention would be so impressive as to make it impossible for
the Court to say that what might otherwise have been thought to be
an obvious step is in fact an obvious step so as to deprive the
inventor of his protection. In my judgment, there is no such
evidence in this oase at all, and I cannot bring myself to think that
merely putting a fan into a flue is such an inventive step as would
Ck. VI]
A PROBLEM TO BE SOLVED
147
support a Patent. The dependent flue leading down into the fire or
below the fire was perfectly well known at the date of the Patent.
For years engineers knew that the use of a fan was an obvious
method of operating on gases or fumes for the purpose of getting
turbulence, and the mere combination of a flue of a particular shape
which was well known and the fan does not seem to me to be such a
step as can be said to be an inventive step or one which could
support a Patent. In my judgment, this Patent is invalid for
want of subject matter.
See also Woodrow v. Long Humphreys <& Co. Ltd . 30 The
alleged invention related to man-hole covers for streets. The follow-
ing short extracts from the judgments by the Court of Appeal arc of
interest : —
Lord Russell of Killowen : — It being accordingly known that
one triangle supported at each corner will cover a manhole without
rocking, is there invention in discovering that two or more triangles
each supported at each corner will also cover a manhole without
rocking ? I think that the answer must be in the negative.”
Romer L. J. : — But the defendants then say that this was an
obvious thing to do. Now that the Plantiff has done it, it does, I
agree, look obvious. But in questions relating to patents it is more
than usually necessary to beware of that wisdom that comes after
the event. Mr. Sissons, one of the Plantiff’s witnesses and himself
an engineer said in evidence that, when he first saw the Plaintiff's
rectangular cover he wondered why somebody had not thought about
it before. Mr. Parr, another engineer, said the same thing. And yet
both these gentlemen had been making attempts, or at any rate had
been interested in the attempts that had been made, and made un-
successfully to design non-rooking covers. For myself I find it
difficult to give a satisfactory answer to this question. If the thing
was so obvious how comes it that it was not thought of before ? The
difficulty in answering this question in similar circumstances has
saved many a patent, and I should have hesitated before coming to
the conclusion that the Patent in suit failed for want of subject-
matter had the claim been limited to rectangular covers. But it is
not so limited, and triangular covers are within it. So too are covers
*« (1934) 51 R. P. 0. 25 (C. A.)
148
THE LAW OF PATENTS IN INDIA
[Ch. VI
with five or more sides, though this cannot affect the validity of the
Claim, if there would be subject matter in a claim limited to rectan-
gular covers. If it required the exercise of the inventive faculty to
apply the principle of three point suspension to rectangular covers
it was equally required for the application of this principle to penta-
gonal and hexagonal covers and so on. Some point was endeavoured
to be made by the Defendants out of the fact that covers in the
shape of stars with four or five or more points are within the Claim.
So they are, though no one can suppose that the Plaintiff had such
covers in his mind. But this cannot affect the validity of the
Patent. Such covers, it may be conceded, would have no commercial
utility, but they would have patentable utitity and that is material
for the present purpose. Nor could a claim to such covers be devoid
of subject-matter. If, as we are told, genius be akin to madness,
then whatever else might be said about them they could never be said
to be wanting in ingenuity ; for only a lunatic could conceive the
idea of plastering our streets with models of gigantic starfish. The
inclusion within the Claim of triangular covers is, however, a very
different matter. Such a claim by itself would in my opinion and
for the reasons I have already given be a bad one.
But it is contended on behalf of the Plaintiff that, even if this
be so, the Claim in the Patent in suit is nevertheless a good one. It
is said that the Claim in its totality has subject-matter, and that this
is sufficient. If the first part of this statement could be accepted I
should agree with the second. But I cannot agree that a claim in
its totality has subject-matter if it includes, as this one does, some-
thing that has none. If the Claim in its totality be good, the owner
of a Seamac cover who for convenience of weight divided it in the
manner to which I have referred earlier would be infringing the
Plaiutiff's Patent and could be restrained from using the divided
cover. And yet between this divided cover and the Seamao there
would be no patentable difference. Its owner would therefore be
entitled to plead that the alleged infringement was not "new,” to use
the words of Lord Justice Moulton, and such defence would succeed.
(See Gillette Safety Razor Company v. Anglo-American Trading
Company Limited 36. R. P. C. p. 465 at p. 480) The Plaintiff would
fail beoause his Claim included something that was bad. The legis-
lature has recognised and provided for the possibility of one or more
of the patentee’s olaims being held to be bad and the rest of them
Ch. VI]
A LONG-PELT WANT
148
good. But it would in my opinion be contrary both to principle and
authority to treat a claim as having sufficient subject-matter purely
because a large, and it may be the largest, part of it has subject-
matter, if the rest has none. For these reasons I am of opinion that
this appeal should be dismissed with costs.”
(See also British Celanese Ltd. v. Courtaulds Ltd. (1933) 50
R. P. C. 63 and in the same volume, at p. 259 (on appeal).
See also Ackroyd v. Strange.* 1 The alleged invention related to
improved hair curlers. The following short extract of the judgment
of Maugham J. (at p. 103) shows how evidence of a long felt want
successfully overcome has a bearing on the question whether or not
there has been a sufficient inventive step. In that case it was found
there had been no longfelt want and there was also no inventive
step. The passage in point is as follows : —
“I fully accept the doctrine to which I have already referred in
other cases, that if there has been a long-felt want in any particular
art or industry and many people have tried to supply the want the
circumstance that then the inventor has provided a method of
supplying the want, whereas a number of people have presumably
not been able to do it, is cogent evidence that there was invention in
the process or in the method which the inventor has adopted. In the
present case I see no reason to think that Mr. Ackroyd, who is one
of the inventors, wanted to have, as I have said, more durable
curlers I cannot hold having regard to the curlers
that were in use and well known at the time, that there was any
inventive step in making this small improvement.
With regard to the facts, I will mention that the reason why
I do not credit the story that Mr. Ackroyd ever thought of trying to
make tubes stronger is to be found iu pages 22 of the Shorthand
Notes of the first day when he is giving evidence and is making
statements that not only are, in my opinion, quite inaccurate and
incredible, but are also opposed, in my view, to the evidence which .
Mr. Swailes, the manufacturer, gave when his evidence was interposed
on the second day, for he stated at the beginning of his cross-exa-
mination that the question of the strength of the tubes had never
been raised.
•» (1933) 60 R. P.0.23.
ISO
THE LAW OF PATENTS IN INDIA
[eh. VI
On the whole, therefore, my opinion is that the Patent is
invalid and that the action accordingly fails and must be
dismissed/’
See Bonnard v. London General Omnibus Co. Ltd.** That case
was decided in the House of Lords against the Plaintiff (who was suing
as Patentee for infringement) on the ground that the patent was in-
valid for want of subject matter in effect by reason of there being no
inventive step. The following extract from the observations of Lord
Shaw (at p. 14) is enough for the present purpose : — “The whole
question is purely one of law, and is confined to the point whether
this Patent contains patentable subject-matter. In considering that
question — a question of law — it . is legitimate, no doubt, to take into
account the previous efforts to find a supply for a long-felt want. In
the ordinary cases which arise in the Courts of law that process is
given in evidence with some elaboration, namely, for example, long
search, possibly attempts which fail, in many cases applications for
Patents which arc found to be unavailing, and a whole review of
these things is exhibited in evidence, these experiments and searches
sometimes extending to many periods of years. This case is as remote
as could possibly be from the ordinary experience of the Court in
this particular. But, while there is no such evidence of long search,
no such evidence of serious and protracted and difficult attempts to
find a remedy, yet oven if there had been, the question of subject-
matter would not thereby have been concluded. All that results
from such a proof, be it elaborate or simple, is only the production
before a Court of law of an element of assistance in the considera-
tion of the problem whether subject-matter exists. Under those
circumstances what was required was to mnke the slatted guard
slanted instead of straight “There is no structural
difficulty at all,” says the witness ; “the difficulty was in thinking of
this method.” And it now turns out that the so-called method was
simply to take the slatted guard and put it on the slant to make it
oover the advance of the wheel. The general public is concerned in
these questions of patents with resultant monopoly rights for the
most simple device, and the present device appears to me to be one
Which might well . have occurred to an intelligent person, without
any exercise of that invention which is necessary as the ground of a
Patent.”
(1921) 38 R. P. 0. 1.
€h. VI] INVENTIVE STEP IN SELECTIVE PATENTS
151
As to the inventive step requisite for a derivative patent : selective
patents.
If the invention comprising the applicant's patent is wholly
anticipated by another Specification, then clearly the grant will be
refused or the patent, should It be granted and later be objected to,
will be held invalid. Where it is not wholly but only partially
anticipated there will in many cases be a sufficient inventive
step to give the applicant a right to the grant of a patent
provided proper steps arc taken to limit the invention patented to
that field only in which it constitutes an inventive step in advanoe
of the other Patent ; as may be done by the requisite disclaimer
and or by a Reference by number to the other Specification if
necessary. And this may be so even in cases where the inventive
step is properly speaking within and not outside the realm of the
other patent. For the mere fact that the basic principle on which
the applicant's patent is based has been claimed in a previous
Patent and, it may be, in a 'Master Patent, is not in ail cases a
bar to the grant of a new patent : it does not by any means in all
cases mean that there is no room for a further inventive step even
within the field of the basic principle of the previous patent
which may form the subject matter of a fresh patent. This is well
illustrated by the observations of the Comptroller General in Hopkins
Case 84 in connection with the procedure for the insertion of
Specific References in Specifications 3 \
“The question that arises is whether in any particular case what
is alleged to be the invention in the narrower sphere is a suffi-
cient inventive step when compared with the other invention in the
wider sphere to constitute patentable subject matter."
The same question, that is, whether the applicant is entitled to
a patent for an invention which falls properly speaking within the
sphere of a previous wider invention, occurs commonly in connec-
tion with patents relating to the mode of manufacture of alloys.
The leading oase in which the principle relating to selective
patents was enunciated, which has since been oited consistently with
approval was Hills v. The London Gas Co . 9 9 The effect of the decision
*« (1909) 27 R. P. C. 72.
* * Bee also remarks inch below : re references.
*• 1 Goodeve’s Patent Cases (1884 edn.) p. 244. -
152
THE LAW OF PATENTS IN INDIA
[Ch. VI
in that case was summed up by the Comptroller-General, Sir Robert
Finlay S. G. in a passage in his decision in the case of Wylie db Mor-
ton's Application ® 7 as follows : — “What that case decided was this —
that if there were an earlier patent mentioning generally all oxides of
iron, there might nevertheless be invention and discovery in finding
out that one of the oxides of iron had particular advantages which
were not shared by the other oxides of iron, and that if the jury
found that the subsequent Patentee had exerted invention and had
thereby picked out one of the class of oxides covered by the general
terms of the earlier patent, the Court would not, merely on the
ground of the fact that the earlier patent contained general terms
which would include the particular article which the second Patentee
proposed to use, hold that his patent was anticipated, and therefore
bad. To that proposition of law I absolutely assent ”
In the case of Wylie & Morton’s Application (already referred
to ) the application was for a Patent for the use of bisulphite of
chromium and bisulphite of iron for dyeing purposes. The applica-
tion was opposed on the ground that the alleged invention had been
patented on an application of prior date (Patent No. 11456 of 1884)
when a Patent had been granted to one Gatty which had been for a
process of dyeing by using mixed solutions of any soluble salt of
chromium and any soluble salt of iron and the claim had been “for
dyeing certain fast colours on cotton yarns and fabrics by fixing
upon the said yarns or fabrics a mixture of oxide of chromium and
oxide of iron substantially in the manner described.” At the hearing
of the opposition proceedings it was not disputed that bisulphite of
chromium is a soluble salt of chromium or that bisulphite of iron is
a soluble salt of iron ; and therefore that the terms of Getty’s Patent
of 1884 were wide enough to include the salts which the Applicants
proposed to use. The question to be decided then was, as stated in
the decision of the Law Officer : “Is it established that the Appli-
cants have shown invention in picking out from the many soluble
salts of chromium and of iron a particular salt, the bisulphite, which
has advantages not shared by the other soluble salts to which Gatty’s
Patent of 1884 related ?”
The decision of the Law Officer, Sir Robert Finlay, (Solicitor
General) (upsetting the decision of the Comptroller General who
had decided that there was au inventive step and that a patent should
•' (1896) 13 R. P. C. 97 at p. 98.
Ch. VI] TAKING OUT PARTICULAR PROPORTIONS 163
be granted to the Applications) was that on the foots as shown by
the evidence produced in that case there were no speoial advantages
in the selection and no sufficient inventive step ; he refused the
grant on that ground.
Another leading case relating to selective Patents, in which
case the Patent was granted, is the case of Nahnsen’s Application ® #
There the application was for a Patent for "Improvements in nitro-
glycerin safety blasting explosives.” The claim was for “the manu-
facture of a safety explosive from 30 parts nitro-glycerin and a
powder admixture containing 38 parts cellulose and 32 parts chili
saltpetre.” The grant was opposed by Nobel’s Explosive Company
Ltd. (among other grounds) on the ground that the invention had
been patented on an application of prior date (No. 442 of 1869) when
a patent had been granted to one Newton for "Improvements in the
manufacture of explosive compounds” : in which the claim had been
for “the use as explosive compounds of a combination of nitre,
either nitrate of potash, soda, baryta or lead, with carbon, or subs-
tances containing carbon or hydro-carbon, such as coal, starch, rosin,
sugar, or other analogous substance, and nitro-glycerine, the latter
besides its own development of power, serving the purpose of greatly
quickening the combustion of the other ingredients.” On this point
the following observations made by the Law Officer (Sir Richard
Webster, Attorney General) on the hearing of the Appeal from the
decision of the Comptroller General may be noted : — “I am of
opinion that in this case the decision of the Chief Examiner was
right, and must be affirmed. The responsibility of stopping a patent
is a very serious one, and it is only in the clearest cases, that a patent
can be stopped, and although I have never hesitated to exercise that
jurisdiction when I am satisfied that there is identity, yet still I can
only do so where I am clear that the merits both in form and subs-
tance rest with the Opponent.” (He then considered the Specifica-
tions). “That brings me at once to the very difficult question, if a
Specification of a Patent has described a combination which would
in terms include every proportion, is that to be held to be the patent-
ing of an invention on an application of prior date, so as to preclude
persons from afterwards being entitled to have a Patent for a specific
proportion. In my opinion no absolute general answer can be given
to that question. Each case must be decided on its partic ular foots ;
•• (1900) 17 R. P. C. 203. ~” _
20
184
THE LAW OF PATENTS IN INDIA
[Ch. VI
bat I should be disposed to lay down, for the purpose of this class,
this rule for guidance, that you must be satisfied from the earlier
Specification that the prior Patent deals with the difficulties and
dangers which would be met, wholly or in part, by the adoption of
any particular proportion ; and that in claiming the whole range,
the Specification indicated that the whole range was applicable to the
particular dangers and difficulties that had to be met.”
“I therefore come to the conclusion that it is not sufficient, in
order to stop a subsequent Patent, that the range of proportions
should be largo enough, or the description of the claim wide enough
to include proportions which are subsequently sought to be patented.
It may very likely be that the merit of the invention does consist in
taking out the particular proportions, and although I do not use it
in any way against the Opponents, I think that the late Mr. Nobel
would have been the first to have admitted that there might be almost
as much invention in finding proportions, in view of the practical
difficulties, as in generalising as . to the possibility of the whole
range of proportions being useful. I therefore come to the conclusion
that upon the ground upon which this Patent is sought to be stopped,
namely, the allegation that the invention has been patented under a
Patent of prior date, I cannot stop the grant, and that the Patent
must be sealed .” 39
Manner of new manufacture : inventive step : foregoing principles
acted on in India.
The foregoing principles regarding what is a manner of new
manufacture, what is an inventive step, have been adopted and acted
on in India in a reported case decided by the Bombay High Court :
see Lallubhai Chakubhai Jarivala -vs- Shamaldas Sankalchand
Shaft 10 . (On Appeal before Sir John Beaumont Kt. C. J. and Mr.
Justice Rangnekar.) Two very lucid and comprehensive judgments
were given on this point in this case. It is one of the few cases in
India, officially reported, where questions of Patent Law in India
were gone into in detail. The patent in question was for a process
for treating almonds and dried fruits for whitening them without
causing loss of flavour. As the material passages deal with both of
the two closely related questions, what amou nts to a manner of new
*• See also 6 R. P. 0. 345 ; 5 R. P. C. 347 ; 9 R. P. C.487 ; & 26 R. P. 0. 491.
. 40 (1934) 36 Bom. L. R. 881.
Ch. VIJ
INVENTIVE STEP IN A COMBINATION
155
manufacture and what constitutes an inventive step sufficient for a
good Patent, the case may here be referred to as authority on both
points. The case also contains lucid and useful observations in
regard to a particular class of case where the inventions ought to
be patented consists of a combination.
As to inventive step and manner of new manufacture : in a combi*
nation.
The following observations in that case were made by
Beaumont, C. J. :
“The first issue raised before the learned Judge (in the Court
of first instance) was, whether the process described in the speci-
fication in exhibit A the plaint, is an invention, and the learned
Judge answered that in the negative. Now, the salient feature of
the process is that bleaching powder is used on the almonds
in conjunction with sulphur dioxide, and they are treated under a
pressure of five lbs. per square inch in a closed chamber. I
think the criticism which may be made upon the very careful
judgment of the learned Judge on this issue is, that he is rather
too analytical, and he considers the various component parts of
the specification without considering the combination. It seems
to me on the evidence to be clear that tho particular combination
which gave satisfactory commercial results for the first timo was only
arrived at by the plaintiff after a year of experiments, and that no
one else had arrived at a similar process, and further, that there was
a demand in the market for whitened almonds, though why there
should be such a demand I do not know. But the evidence is that
there was a demand for these whitened almonds, and the merchants
thought they could get a better price for almonds in that state than
for almonds in their natural state and, in my opinion, on the evidence
the plaintiff has proved that he showed a sufficient amount of
inventive genius in arriving at this method to justify the grant of
letters patent in respect thereof. I think, therefore, the first issue
should be answered in the affirmative.”
Rangnekar J. arrived at the same conclusion, making the
following observations : —
“The first question is, Is this process, for which a patent is
granted to the Plaintiff, an invention within the meaning of the
Ihdian Patent and Designs Act, 1911 ? Section 2 (8) defines invention
as meaning “any manner of new manufacture, and includes an
156
THE LAW OF PATENTS IN INDIA
[ Oh. VI
improvement and an alleged invention,” Section 2 (10) says that
“Manufacture” includes any art, process or manner of producing,
preparing or making an article, and also any articlo prepared or
produced by “manufacture.” Manufacture, therefore, comprehends
not only productions but also the means or method of producing
them, so that a new process or an improvement on an old process
will be a manufacture within the meaning of the Act. Applying
these definitions it is difficult to see why the plaintiff’s process cannot
be called an invention. The learned judge has considered the steps
of which the process consists and examined each in the light of the
evidence before him separately. His conclusion is as follows : —
“When we come to apply the established principles to the
plaintiff’s claim to have invented a new process we are at once met
by the difficulty that so few of the details appear to form an essential
part of it. The preliminary sulphuric acid washing is admittedly not
necessary. Moreover any acid except sulphuric acid would do to get
rid of the oalcium depost on the shells. It is not suggested that the
use of an acid for this purpose needed invention and the evidence of
the witnesses examined by the defendant goes to show that similar
products can be turned out without the use of any acid at all. Again
any form of sulphur oven will suffice and apparently no vital
importance is to be attached to the pressure of five lbs. per square
inch or to the hot air, which the defendant by the way does not use.
So that it really seems to come to this that what the plaintiff claims
to be new and essential about his process is that for the first time he
combined the use of bleaching powder (not previously used for this
purpose) with an up to date method of bleaching in sulphur dioxide
(the ordinary process). Now it is true that there seems to be nothing
in the books to which reference has been made about the uss of
bleaching powder and sulphur dioxide combined in the treatment of
dried fruits. But, bleaching powder is commonly used for so many
different things that the idea of trying it to bleach dried fruits might
occur to almost any body, and if the bleaching powder alone was not
satisfactory almost anybody might think of trying it in combination
with the ordinary bleaching medium, sulphur dioxide.”
. With respect to the learned Judge, in my opinion, this is not
the correct method of determining whether a process or a method
claimed to be an invention is an invention or not. Undoubtedly,
the process was in making use of the substances more or less
Ch. VI]
IN CHEMICAL PATENTS
157
previously known, but the plaintiff's ingenuity and skill was in
combining these substances in a particular manner and in a particular
sequence so as to prepare and produce an article which admittedly
was not produced before, and in overcoming the difficulties which
existed even after a crude application of some of these substances
previously. Then, there are at least some new features thought of
by the Plaintiff which had not occurred to the persons in the trade
or interested in the experiments for the purpose of whitening the
almonds. The learned Judge has found, and, I think, correctly,
that bleaching powder was not previously used or tried on dried
fruits. Secondly, the effect of a pressure of five lbs. per square inch
by means of sulphur dioxide forced into the bleaching chamber
with hot air resulted in preserving the kernel and reducing
the time of treatment by some hours. Originally the plaintiff applied
the process with steam, but further experiments showed that hot
air was far more efficacious for that purpose. This discovery
required no less than fifty-eight experiments beginning from February
9, 1929. The fiftieth experiment was made on October 5, 1930, when
steam was used. Some more experiments were made thereafter, and
as the result of the sixty-fourth experiment made on November 5,
1930, the efficacy of hot air was discovered. Two further experi-
ments were made, the last one being on November 13, 1930.
The law on the subject is stated in Halsbury Vol. XXII
para 292 p. 138 as follows : —
“A new combination may be the subject matter of a patent
although every part of the combination per se is old, for here the
new art is not the parts themselves, but the assembling and working
them together, which ex hypothesi is new. If the result produoed
by such a combination is either a new article, or a better article, or
a cheaper article than before, such combination is an invention or
a manufacture within the statute and may well be the subject matter
of a patent".
I may also refer to a passage which the learned Judge himself
has used from Fletcher Moulton on Patents (1913 Edn) p. 46, which
is in these terms : —
“In some oases, and more particularly in the case of chemical
patents, a variation of old methods has been held to form subject
matter because it was not possible to predicate the qew result from
*58
THE LAW OE PATENTS IN INDIA
[Ch.VI
the results of the old method with any certainty or without experi-
ments and research.”
The above passages, in my opinion, support the view which I
am now taking.
A new manufacture does not mean only a new article of
manufacture, but also means a new process or method of manufactu-
ring something new. It does not mean a new principle of manu-
facture — a principle cannot be an invention — but it means a new
application of the principles so as to produce a new method or a
new manufacture. In Housekill Coal and Iron Company v. Neilson 4 1
Lord Justice Clark Hope, in directing the jury, observed as follows
(p. 685) : —
“I state to yon the law to bo that you may obtain a patent
for a mode of carrying a principle into effect : and if you suggest
and discover, not only the principle, but suggest and invent how
it may be applied to a practical result by mechanical contrivance
and apparatus, and show that you are aware that no particular sort
or modification, or form of the apparatus is essential in order to
obtain benefit from the principle ; then you may take out your
patent for the mode of carrying it into effect and are not under
the necessity of describing and confining yourself to one form of
apparatus. ..You may generally claim the mode of carrying the
priniciple into effect by mechanical contrivance, so that any sort
of apparatus applied in the way stated will more or less produce
the benefit and you are not tied down to any form.”
In British Vacuum Cleaner Company Ltd. v. Suction Cleaners
Ltd.* 2 the invention consisted in a new principle applied to the
cleaning of carpets by vacuum. The inventor discovered that it
was essential to success to so drive the pump and apply the pipes
that a strong vacuum might be maintained at the carpet and at the
filter. Other suction apparatus had been used before the date of
the patent, but no one had appreciated the importance of maintaining
a high vacuum. It was argued for the defendants that this was
merely a patent on a question of degree of the vacuum. It was
held by Farwell J (p. 312). —
■ "The whole point of it is, ns is stated there, that it is
! 41 (1843) 1 Web. P. C. 6735 : Terrell (7th edn) p 50 : 9 Oi &Y. W.
(1904) 21 R. P. C.203.
Ch. VI] MERIT MAY DEPEND ON THE RESULT 150
essential to practical success to drive the pump by power and to
maintain a vacuum of at least 5 lbs. per square iuch at the filter.
That appears to me to be a perfectly good process and well and
sufficiently stated...”
Perhaps the best exposition of the law is that contained in
Cannington v. Nuttall* 3 where Lord Hatherly L. C. observed (p.
216 ) : —
“It is quite apparent. that the cooling thing, the current of
air, was nothing new — it is as old as the fables of AEsop — it is as
old as the man blowing his soup in order to make it cool. But so
it is with every invention — the skill and ingenuity of the inventor
are shewn in the application of the well-known principles. Few
things come to be known now in the shape of new principles, but
the object of an invention generally is the applying of the well
known principles to the achievement of a practical result not yet
achieved. And I take it that the test of novelty is this : Is the
product, which is the result of the apparatus for which an inventor
claims letters patent, effectively obtained by means of your new
apparatus whereas it had never before been effectively obtained
by any of the separate portions of the apparatus which you have
now combined into one valuable whole for the purpose of effecting
the object you have in view ?”
The point of a combination patent is that the elements of
which the combination consists is to produce one result. The merit
depends upon the result produced. Frost in Vol. I of his Patent
Law and Practice, 4th Edn., observes as follows (p. 74)
“The merit of a new combination very much depends on the
result produced. When a very slight alteration turns that which
was practically useless into what is useful and important, the Courts
consider that, though the invention was apparently small, yet the
result being the difference between failure and success, it is iit
subject matter. Thus, the mere placing of two flat wicks parallel
to each other in an oil lamp, two concentric round wicks having
been previously combined, and flat wicks being perfectly well
known, has been held sufficient to merit a patent ; ”
The authority cited is Hinks <& Son v. Safety Lighting Co.**
«'■ (1871) 5 H. L. 205. ~ ’
44 (1870) 4 Ch. D. 607.
180 THE LAW OP PATENTS IN INDIA [Ch. VI
In that case Jessel M. R. makes the following observation
(p. 615) : —
“Where a slight alteration in combination turns that which
was practically useless before into that which is very useful and
very important, Judges have considered that, though the invention
was small, yet the result was so great as fairly to be the subject
of a patent ; and as far as a rough test goes* I know of no better’*.
Iii patent cases the Courts attach great importance to the fact that
the alleged invention was only arrived at by a series of experiments.
The learned Judge at p. 64 of the paper book has referred to this
principle and has cited an authority in support of it. It is beyond
dispute that the plaintiff carried on numerous experiments from
1924 to 1930.
The rule as to application of old contrivances to analogous
purpose does not necessarily apply to cases of chemical invention
(see Badische Amlin und Soda Fabrikv. Levinstein ) , 4B It is in
evidence that when, previously, bleaching was done with sulphur
fumes, the fruit was yellow and the flavour was wanting. Even
when the plaintiff tried his first process in April 1930, and succeeded
in obtaining white colour, the process was found to be a failure,
and the almonds sold by Harakchand Shivji & Co. were returned
by merchants to them after some months. That the attention of
the dealers was directed to an improved method is undoubted. It
was for that purpose that Jarivalla Shah and Co opened a laboratory
and engaged Dr. Patel to experiment on it, and Girdharlal asked
him to find out a process, among other things, relating to almonds
of which there was a great demand. It is equally clear on the
evidence that there was a demand for this kind of ftuit at least
since 1928, and as soon as whitened almonds appeared in the
market they fetched a higher price and people began to deal in
them. Then, although Dr. Patel decries plaintiff’s invention, he
had to admit that his experiments, which were no less than about
twentysix, even on paper, did not produce satisfactory results, and
his process was a failure. He had further to admit though at first
he asserted that this particular method was in trade books, that as
far as books went there was nothing in them about the combination
of bleaching powder and SO a in the case of dried fruits. He
4 ® (1887) 12 A. C. 710 at p. 723.
Ch. VI]
ILLEGAL PURPOSE
181
admitted that the idea of using pressure had not occurred to him
or to ' anybody else, nor did the application of sulphur dioxide.
With these facts therefore before me I have no difficulty in holding
that the two features which are necessary for the validity for the
patent namely, novelty and utility, are there in the plaintiff’s process
and that it was a new invention unless the defects specified in s.
38 of the Indian Patents & Designs Act arc present. I shall
consider that question presently ”
As to illegality : —
See Pessers and Moody vs. Haydon & Co } 8 That case is clear
and sufficient authority, if any authority were necessary, that a
Patent will be held invalid if it is established that it is for an illegal
purpose. But it is not enough to establish that the Patented inven-
tion may be used for an illegal purpose. The observations of Eve
J. in that case of which the following is an extract are directly in
point : — “This particular instrument could be made the means
of gaming and possibly of unlawful gaming, having regard to
the places where the gaming is carried on. But, human nature
being such as it is, I think it would pass the wit of man to invent
any game, either of skill or chance or a combination of skill and
chance, which might not be made the means and method of illegal
gaming. It does not follow from that, of course, that the game or
the instrument is in its nature so illegal as to disentitle it to the
protection to which the grant of the Patent would otherwise entitle
it. In considering this case, I am bound to make this comment
upon it : that the Defendants, as I understand, are now disposing
of and selling these instruments in London and in England, and if it
be, as Mr. Lunge has suggested, the duty of the Court to stop, at as
early a stage as possible, the corruption of the youth of this country
by letting them gamble in these instruments for pennies or sweets
or bad cigars, it seems to me that that is an argument in favour of
my granting the injunction rather than my allowing two sets of
corruptors of youth to be placing upon the market these injurious
instruments. But that is only an observation ; it does not really
strengthen the Plaintiff's case. What I have to consider is, whether
this game is so illegal in its nature as to constitute improper subject
matter for a Patent. I can conceive persons, in fact I think I know
4 * (1909) 26. R. P. 0. 58.
21
THE LAW OF PATENTS IN INDIA
[Ch. VI
persons, of that intellectual capacity who would thoroughly enjoy
playing that game without any pennies or cigars or any other prizes
being involved in it ; they would appreciate the increased skill
which they were obtaining as they practised it shot after shot, and
I can quite see the time coming when this will be taken up with all
the craze which the game called Ping-Pong was at one time taken up,
and, indeed, by persons who certainly would not come under the
category of small boys who frequent icecream shops. Under those
oircumstances I do not feel myself at liberty to say off-hand that
this (is) an illegal subject-matter for a Patent”.
As to Immorality : —
See A and IPs Application.* 7 The application which related to
"an improved contraceptive device” had been refused acceptance
by the Assistant-Comptroller, it seems on the grounds that the
invention was “one of a class for which patents have not hitherto
been granted in this country” (i.e. the United Kingdom) and on the
ground that he refused it also under Sec. 75 of the Act (that is to
say on the ground of immorality). The Applicants appealed. The
Solicitor-General (Sir Thomas Inskip) upheld the decision of the
Comptroller and dismissed the appeal. It will be observed that he
did not come to a finding that the alleged invention was for an
immoral purpose and did not dismiss the appeal on that ground.
That portion of his judgment dealing with the second ground, the
ground of immorality, was as follows : — “I express no opinion as
to whether the use of these articles is consistent with morality,
because I am not aware that the law has laid down what the exact
standards of morality are. I am a Court of Law, and not a Court
of Morality”.
General discretionary ground for refusal to accept application or
for refusal to grant patent : based on the nature of the pre-
rogative of the Crown.
As to the first ground given by the Assistant Comptroller in
the case last mentioned for refusing to acoept the application it is
to be noticed that this was also dealt with in the judgment of the
Solicitor-General. “The question arises — whether, quite apart from
Sec. 75, the Crown in the exercise of its prerogative oould possibly
~ * 7 (1927). 44 R. P. C. 298.
Ch. VI] UNFITNESS FOE EXERCISE OF PREROGATIVE 168
be expeoted to exercise its discretion to grant a patent for an artiole
designed as an apparatus for the prevention of conception... I
decline to be any party to the grant of a patent for this class of
article.... Even if, as to whioh I express no opinion, its use as a
contraceptive is consistent with morality, I am not prepared to
exeroise on behalf of the Crown the Crown’s discretion in favour
of the grant of a patent in respect of it. ...All I say is, I think these
are not articles for which, whether the specification be amended or
not, the Crown can be expected to exercise its discretion by way
of granting a patent. I therefore dismiss the Appeal”.
In argument, Sec. 97 of the English Act had been expressly
relied on. And it had been contended that the Law Officer who
represents the Crown and is charged with the exercise of the pre-
rogative reserved by Sec. 97 had ample power to refuse the grant
for articles which it would not be fitting to sell as being protected
by Royal Letters Patent. And it was stated that for the laBt 44
years Patents for such articles had invariably been refused.
The decision may therefore, it is submitted, be treated as
authority for the principle that the prerogative reserved by Sec. 79
of the Indian Aot of 1911 (corresponding to Sec. 97 of the English
Act) may in certain cases be relied on as an independent ground for
the refusal by the Controller to accept an application or to grant a
patent for the reason that a particular alleged invention is for a
class of article unfit on general grounds to be the subject of the
exeroise of the Crown’s prerogative.
Each case must be considered upon its own merits 4 * : —
As was said in one case 4 0 it is easier to say what is insufficient
to obtain a patent than to define what is sufficient. 60
At what stages objections for want of subject matter may be
raised in British India : and in what form.
The proceedings in which objections may be raised against
the validity of a patent are discussed in later chapters. It may be
4 • See In the Matter of an Application for a Patent by G. (1920) 37 R. P. G. 247.
4 » In the Matter of au Application foa a Patent by D, A, and K. (1928) 43 R.
P. G. 154 at 158.
40 Other references as to subject matter : see also 42 R. P. G. 320 : 39 R. P. 0.
355 : 38 R. P.0.307: 27 R. P. C. 247, 112, 100 : 35 R.P.C. 90 : 32 R.P.C. 348,
345.
164
THE LAW OF PATENTS IN INDIA
[CfuVI
convenient however here to note briefly at what stages the various
objections which have been discussed in this chapter under the head
of “subject matter” may bo respectively taken in the various pro*
oeedings available to a person attacking the patent.
(a) As to the objection that the alleged invention is not a
manner of new manufacture : —
(i) Before acceptance of application : —
This objection may be raised by the Patent Office before
acceptance of the application : by virtue of Section 5. The wording
of the statutory ground under Section 5 (lXe) is : —
“The invention as described and claimed is prima facie
not a new manufacture or improvement”.
(ii) In opposition proceedings before the Controller : —
The objection is not expressly mentioned among the grounds
given in Section 9. Moreover by the words there used — “but on no
other grounds” — the section expressly excludes objections on any
other grounds being taken by the opponent. Neverthless it has been
held in England that the objection may be taken either by the
opponent or by tho Comptroller of his own initative. It is
submitted that the position is the same in India.
(iii) On a petition to Court for revocation : —
This objection may bo raised by the petitioner on a petition
for revocation, it is submitted, by virtue of Section 26(lXb) read
with Section 2(8). The wording there used is : —
“That any invention included in the Statement of Claim
was not at tho date of the application fora patent, a
new invention within the meaning of this Act.” And
an invention is defined as follows : —
“Invention” means “any manner of new manufacture
and includes au improvement and an alleged inven-
tion”.
(iv) In an infringement suit as a defence : —
The objection may be raised : by virtue of Seotion 29(2).
(b) As to the objection that there was in the alleged invention
no inventive step sufficient to support a patent : —
(i) Before acceptance of the application : —
Ob VI] AT WHAT STAGES OBJECTIONS MAY BE RAISED
165
It is submitted that this objection may be raised by the Con-
troller at this stage : provided that a very strong prima faoie case
appears on the face of the Specification for the sustaining of the
objection.
(ii) In opposition proceedings : —
It is submitted that this objection is open to an opponent in
opposition proceedings, and that it is open also to the Controller
to take it in opposition proceedings. It is submitted that the legal
position is the same as in respect of the previous objection already
discussed.
(iii) In a petition to Court for revocation : —
This objection is not expressly mentioned as a separate ground
among the grounds stated in Section 26 of the Indian Act. It is
however submitted that it may be read into that section as bein r
implied or covered by Section 26(l)(b) or even possibly by Section
26(1 Xd).
(iv) In an infringement suit as a defence : —
The position is the same as for a Petition for revocation : by
virtue of Section 29(2).
(c) As to the objection that the use of the invention will be
contrary to law : —
(i) Before acceptance of application : —
This objection is open to the Controller by virtue of Section
69. It must be assumed that as the section gives the Controller
power to refuse the grant, he has also power in a proper case to
refuse to accept an application. The wording of the section is : —
“The Controller may refuse to grant a patent
for an invention. of which the use
would, in his opinion, be contrary to law
or morality”.
(ii) In opposition proceedings : —
No mention of this objection occurs among the grounds open
to an opponent under Section 9. In view of the words used in the
section — “and on no other ground” — it is submitted that this objec-
tion is not open to be taken in opposition proceedings by an
opponent. It is submitted that it is however open for the Contro-
ller to take it in opposition proceedings.
.166
THE LAW OF PATENTS IN INDIA
[Ch. VI
(iii) On a petition to Court for revocation : —
This objection is not mentioned among the grounds stated in
Section 26. It seems therefore that it is not open in revooation
proceedings.
(iv) In an infringement suit as a defence : —
The position is the same as above stated in regard to revoca-
tion proceedings : by virtue of Section 29(2).
(d) As to the objection that the use of the invention will be
contrary to morality : —
(i) Before acceptance of application : —
(ii) In opposition proceedings : —
(iii) On a petition to Court for revocation : —
(iv) In an infringement suit as a defence : —
The position at each stage is similar to that regarding the
objection for illegality. The objection is however one which will
seldom be held to prevail.
(e) As to an objection that the alleged invention is unfit to
be the subject of the exercise of the Crown’s prerogative : —
(i) Before acceptance.
There is clear authority in England for the view that it si
open to the Controller to refuse to accept an application on this
ground alone under the implied powers which he has by virtue of
Section 97 of the English Act 1907*1932.
Since Section 79 of the Indian Act of 1911 is in precisely the
same words, it is submitted that the Controller in India also must be
taken to have the same right.
(ii) In opposition proceedings : —
This objection is open to the Controller for the same reasons as
previously stated.
The objection is not mentioned among the grounds available
to an opponent under Section 9. It is submitted therefore that it is
not open to an opponent in opposition proceedings.
(iii) On a petition to Court for revocation : —
This objection is not available, it is submitted, as a ground for
revocation. It is not expressly mentioned as a ground under
Section 26. And it is submitted that it oannot be read into the
Ch. VI]
SUBJECT MATTER AND NOVELTY
167
section as being implied or covered by any of the grounds there
stated.
(iv) In an infringement suit as a defence : —
This objection is not available, it is submitted, to the Defen*
dant in an infringement suit : since the grounds open to him in
such suit are only those open to a Petitioner in revocation pro-
ceedings.
How far the question of subject matter is one of law or one of
fact.
The question whether or not the thing is a manner of
manufacture appears to be considered to be a question of law. 51
The question whether the inventive faculty has in any given
case in fact been called for may be in a sense a question of fact.
Yet the real question whether there is subject matter to support a
patent is formally a question of law.
The connection between subject matter and novelty.
From what has already been said it is seen that there is a very
close connection between the requisites of an invention which in
Patent Law are ordinarily referred to as “subject matter” and the
requisites ordinarily referred to under the head of “novelty”. And
in practice any set of facts which raises questions regarding the one
will ordinarily be found to raise questions regarding the other
also. The connection between the two topics has been ably stated
in Fletcher Moulton at p. 21 in the following passage : —
“Although it seems that the question of novelty and the
question of invention are separate, they are usually very closely
connected in every patent case, and, in fact, it will not be found
that any consistent distinction in terminology has been observed by
the Courts between novelty and subject matter in its restricted
sense. It will readily be seen that the distinction is often one
without any real difference. In nearly every case the exact thing
patented has never been proposed before, and the dispute is usually
as to the extent of the advance made on previous knowledge. In
such case the question, is the alleged invention new, might be said
' 1 See Fletcher Moulton p. 15 citing Walton v. Potter (1841) W. 0. P. 597 ;
and Cornish v. Keen (1836) W. P. 0. 501.) See also Bonnard v. London General
Omnibus Coy Ltd. ( .921) 38 R. P. C. 1 at p. 12.
THE LAW OF PATENTS IN INDIA
[Oh. VI
183
to be solved by the Coart determining what advance on previous
knowledge would be necessary in that case to constitute an inven-
tion and then deciding i! such advance had in fact been made,
while the question of subject-matter would be decided by first
determining what advance had been made and then considering
whether such advance, were sufficient to constitute invention, and
it is usually very doubtful which process has been adopted by the
Court. Consequently in dealing with subject-matter many decisions
which are in form decisions as to novelty will have to be
considered”.
PART III. NOVELTY : AND FREEDOM FROM
ANY PRIOR GRANT.
A. NOVELTY.
Novelty Demanded by the Statute of Monopolies.
It is clear from the passage already quoted from the Statute of
Monopolies 1 that novelty is expressly made a sine qua non of a good
invention if it is to form the material of a good patient.
Demanded at Common Law.
Even before the Statute of Monopolies it was decided in the
Courts in several reported decisions that the grant of a privilege in
a known art or trade was illegal . 2
Want of novelty considered as want of consideration for the grant
in the bargain between the patentee and the public.
Apart from other reasons Hindmarch put the necessity for
novelty on this ground : he maintained that as the grant of a patent
was in the nature of a bargain between the patentee and the public,
and as the only consideration moving from the patentee was the fresh
knowledge of his new invention which he gave to the public, then,
if the alleged invention was not new, there was an entire absence of
any consideration moving from the patentee ; and on that ground
alone no patent could validly be granted or if granted it would be
void. It may be of interest to quote the passage in his own
words :
“The only thing which a patentee gives to to the public is a
knowledge of his invention, and a patent is in effect a bargain
between the patentee and the public, in which the public, in consi-
deration of an inventor communicating to them a knowledge of his
invention, so thafthey may afterwards be enabled to practise it, -
1 Bee page 14.
f See Hasting’s patent (1561) 1 Web. P. C. 6 ; Matthey’s Patent Web
P. C. 6 : Humphrey’s Patent 1 Web P. C. 7 : Darcy v Allein (1602) 1 Web P. C.
6 : Clothworkers of Ipswich (1615) 1 Rol R 4 : and see Edmunds at p. 33. And
see Terrell (8th edn) p. 83 : And see the account of the case of Monopolies in
Monopolies by Patent by Qordon which is referred to in Terrell (ibid) p. 84.
22
170
THE LAW OF PATENTS IN INDIA
[Ch. VI.
grant to him the sole use of his invention for a limited time. But,
if an invention is not new, the patentee does not communicate any-
thing to the public which they did not know before, and therefore
the patentee gives them nothing which can be considered as a consi-
deration for the grant, and therefore the patent is wholly void.” 8
There is another interesting passage to the same effect, which
was subsequently approved by Lord Blackburn in Patterson v Direc-
tors of the Oas Light db Coke Co * as follows : —
“If the public once becomes possessed of an invention by any
means whatever, no subsequent patent for it can be granted either
to the true aud first inventor himself or any other person, for the
public cannot be deprived of the right to use the invention, and a
patentee of the invention could not give any consideration to the
public for the grant, thd public already possessing everything that he
could give.” 5
It may be observed that the words “by any means whatever”
which occur in the last quoted passage are not today accurate.
Modern legislation has effected in favour of the inventor an immu-
nity from the ordinary loss of rights which would occur from publi-
cation when such publication is at certain Exhibitions. Also by
certain international conventions and reciprocal arrangements
between different countries it is possible for an inventor to take out
a patent in one country, and, even though that patent may be
published in another country, still to be free to take out a second
patent in that other country provided he does so within one year.
But for all that, for general purposes the passage is as good law to-
day as when it was written.
Want of novelty in a material part of the invention may avoid the
whole patent.
It has long been held to bo the law that any such want of
novelty in a material part of the invention on a proper construction
of the specification will have the effect of making the whole Patent
void : even though the specification may relate to other parts of the
invention which are new. The reason for this has been put on two
* See Hindmarch (1846) p. 103 & 104.
4 (1875)3 A. 0.239 (H.L.) at 244).
1 See Hindmarch (1846) p. 33.
Ch. VI.] INVALIDITY FOR WANT OF NOVELTY 171
different grounds. The one, on the line of reasoning already indi-
cated^ that as the consideration for a patent is entire, want of
novelty in a material part of the invention constitutes a want of
consideration moving from the patentee. The other, that such a
want of novelty in a material part of the invention constitutes a
false suggestion or misrepresentation having been made by the
patentee and appearing on the face of the patent. 6
This aspect of the matter is further considered below in
the chapter on Amendment ; since amendment may become of
vital importance in order to save a Patent which may be found
to be wanting in novelty only in part.
For present purposes there is now no need to consider further
the juristic reasons on which came to be based the proposition of
law that a valid Patent was required to be for an invention that was
novel. Novelty is now, as of old, in law of the essence of a good
Patent. About the general principle there can be no doubt : the
difficulty arises in coming to a decision on a particular case. The
question of novelty is thus in practice the most important and also
the most disputed point when the validity of any patent is in
question. Though tests of novelty are difficult to lay down, certain
classified principles may be said to have been evolved by the Courts
in their decisions of the reported cases. Even though the question
of novelty is in the main one of fact, it may yet be of some use to
examine the reported cases. Novelty may be found to be excluded
in a variety of circumstances and in a variety of ways and on a
variety grounds which can with advantage be analysed and classified
in a manner which is of some assistance. It is only in this way that
some degree of uniformity in the decisions can, as it has been, be
achieved : or that inventors and patentees can be assured of any
degree of security. The various grounds on which want of novelty
may be found to arise have now also been expressly formulated in
considerable detail in modern legislation both in India (under the
Act of 1911) and in England : particularly under the English Act of
a Pee Hindmarch (1846) p. 115 : Edmunds p. 32 : and the following cases
cited by him : — Bill v Thomson. 8, Taunt 401. Brunton v Tawlcer, 1821, 4. B,
& Aid, 541 ; Lewis v Morling , 1829, 10. B & C 27 ; Kay v Marshall , 1839, 5 Bing.
N. C. 501 ; Oibson v Brand , 1842, 4 M & G 179 ; Muntz v Foster , 1844, 2 Web.
P. C. 112 ; Templeton v Macfarlane, 1848, 1 H L. C. 595 ; McCormick v Qray t
1861, 7 H & N 25.
172
THE LAW OF PATENTS IN INDIA
[Ch. VI.
1932. Further consideration in some detail of the grounds on which
such want of novelty may arise is to be found in later chapters
concerned with the actual contesting of opposition proceedings and
of infringement suits. For the present it may be of interest to
make here certain observations in regard to want of novelty in a
general aspect.
Various methods of anticipation which result in want of novelty.
Want of novelty entails anticipation. For an invention to be
other than a new invention in the accepted sense knowledge of it must
have been made public previously. The necessary anticipation may
be established by showing a state of prior public knowledge in one
of two forms : by showing either prior common general knowledge
or prior public knowledge simply ; which latter may be due to
publication of the invention orally or in some prior document or
by prior user.
Anticipation in British India.
The expression “new invention” has always been taken to mean
an invention new within the realm. When the novelty of an inven-
tion is under consideration therefore, the whole question is : is it new
to British India ? For this reason any anticipation outside British
India is totally immaterial. 7
Anticipation by prior common knowledge.
Want of novelty will be shown in the highest degree in the class
of cases where anticipation is established by showing that the alleged
invention formed a part of prior common knowledge in British India.
The thing is obviously not new if the mass of those persons concern-
ed in the art had knowledge of the thing before it is alleged to have
been invented : for common general knowledge entails a wide degree
of public knowledge.
Degree of publicity necessary to constitute common knowledge.
To establish'common knowledge it is necessary to show that the
alleged inventionfformed a part of the state of general knowledge
at the time in question. This may be done by proof of passages
from standard authorities or reputable text boohs of the time. Or
7 Compare Haddan p. 96 ; citing Edgeberry v Stevens (1691) 1 Web. P. C.
36 ; also Rolls v Isaacs (1881) 19. Ch. D. 268.)
Ch. VI.] COMMON KNOWLEDGE AND PUBLIC KNOWLEDGE 173
it may be done by the oral evidence of witnesses who are in a
position to speak to what was the state of knowledge at the time.
Or it may be done by proof of sufficiently widespread prior user.
Previous specifications may, it seems, also be relied on in some
instances as some evidence of prior common knowledge ; though
how far such specifications should be held to be proper evidence of
prior oommon knowledge is a matter of some doubt which has been
commented upon in several cases.
It is not necessary to show that every unskilled workman
concerned with the art had the knowledge, but it is sufficient to
show that a fair number of ordinarily skilled persons, who would,
having regard to the nature of their work, be interested, had the
knowledge.
Difference between common knowledge and public knowledge.
If a thing is a part of common knowledge it must of necessity
also be public knowledge. But a thing may have been published
sufficiently to be considered public knowledge without beiny gener-
ally or commonly known, and without, therefore, forming any part
of that stock of common public knowledge which is common know-
ledge.
In regard to common knowledge it is ordinarily impossible and
unimportant to show by what means of publication of particular
information the state of common general knowledge was achieved.
All that can be done for practical purposes, is to establish proof of
the existence of the state of common knowledge which may have
resulted from any and various processes of publication. In regard
to public knowledge on the other hand it will more often be possible
to show the means of publication of particular information ; and
indeed it will commonly be only by showing the means of publi-
cation, that it will be at all possible to prove the existence of the
public knowledge which results from the particular publication.
Anticipation by prior public knowledge.
Want of novelty will equally be shown where anticipation is
established by showing that the alleged invention formed a part
of prior public knowledge in British India.
174 THE LAW OF PATENTS IN INDIA [Ch.Vl.
Various means of publication which may result in public know-
ledge.
Just as the .means of publication may have been any and
various and yet, if the degree of publicity has been wide enough,
there may be common general knowledge, so also the means of
publication may be any and various which may result in public
knowledge. And it is immaterial whether the means of publication
be oral or in writing or by user and ocular demonstration ; whether
in a book or in a pamphlet or in a newspaper or periodical or in
other Patent Specifications, or in an official government report
or in mere drawings ; or whether in English or a foreign language ;
or in whatever other form ; provided of course there is sufficient
publication.
Degree of publicity necessary to constitute public knowledge.
The broad test will be the same, it is submitted, whether the
prior publication alleged is by prior user, or by prior documentary
publication or by prior oral publication ; and the question will bo
whether there was or was not a sufficient publication to disclose
the invention publicly so that others could reproduce it.
Publication by user : prior user as negativing novelty.
There may be the most complete form of anticipation of an
alleged invention by prior public user. If an alleged invention is
actually used in public, no question of any other publication of
mere knowledge of the invention short of the publication by user
need arise. If the*' invention is in fact being publicly used this
alone is a sufficient prior anticipation of it and publication of it,
quite apart from any other means of publication of it ; and it
follows there will be want of novelty.
Proof of prior public user will be therefore evidence of or
one means of establishing want of novelty.
Prior user : degree of publicity necessary : whether prior user is
to be considered apart from negativing novelty.
A question may arise whether prior user, if it does not amount
to want of novelty or independently of want of novelty, will be a
bar to the grant of a patent or will invalidate a patent that has been
granted.
Conflicting views appear to have been held on this point ; or
Ch. VI.]
PRIOR USER
175
at least decisions have been arrived at which when examined appear
to show that they have been founded on a holding of conflicting
views on this point.
Edmunds after citing a passage from Hindmarch, simply
says : — “The novelty of an invention is destroyed by prior public
user of the same or a similar invention.” He does not treat of prior
user as deserving attention from any other aspect . 8
The passage in question cited by Hindmarch is ; — “A public
use of an invention is sufficient to avoid a subsequent patent for it
for three reasons : firstly, because the public use of an invention
is evidence of a public knowledge of it ; secondly, because the
Statute Monopolies expressly requires that an invention granted
by patent shall be such as others (than the inventor), at the time
of making the patent or grant, do not use ; and thirdly, because
every patent expressly requires that the invention comprised in it
shall be new as to the public use of it .” 9
Edmunds goes on to say : — “Again the invention must have
been used in public .” 10 Beyond citing with approval the passage
of Hindmarch above quoted, he does not make any suggestion that
prior user which is not in public so as to amount to a publication
negativing novelty, will be any bar.
In Terrell on Patents also there does not appear to be any
definite suggestion that prior user should be considered as a bar
apart from its being a form of want of novelty : and the topic of
prior user is treated merely as incidental to the larger topic of
want of novelty . 11
There is authority in numerous cases for the view taken in
Edmunds and in Terrell.
The opposite view, which is possibly hinted at though not
H Edmunds (1890) p. 39.
" i,e, Hindmarch p. 108.
10 Edmunds p. 40.
11 See Terrell (8th edn.) p. 85 et. seq. The point would have arisen in regard
to secret user : but this is now regulated in the United Kingdom by Sec. 25 (2) (0)
and by Sec. 93 under the amendments effected by the 1932 English Act. As to the
position in the U. K. prior to 1932 see Terrell 7th edn. p. 83-85 : also Mr. R. J.
Tugwood's Paper printed in Vol. 42 of the Transactions* of the Chartered Institute
of Patent Agents at p. 172.
176
THE LAW OF PATENTS IN INDIA
[Ch. VI.
amplified in the passage on Hindmaroh above quoted, was most
positively stated, it seems for the first time in a judgment of
Parker J. in Robertson v Purdey 11 : the reasoning being based on the
wording of the Statute of Monopolies itself. An extract from the
judgement in that case sufficient to show both the cogent reasoning
on which the view was arrived at by Parker J. and at the same time
the extent to which anyone holding this view is committed to go,
is cited below. As Parker J. pointed out the strict wording of the
Statute of Monopolies is as follows ; —
“Which others at the time of making such Letters
Patent shall not use.”
He pointed out that the words if taken in their strict sense gram-
matically could only mean that a patent is only to be validly granted
to an applicant if other persons at the time of the grant to be
made to him are not in fact using his invention. That there is no
qualification there about using the invention publicly or anything
of that sort. Parker J. therefore in that case made certain express
observations to the effect that he did not consider that a patent
could be validly granted in any oase when there was a prior user
of the invention in question : even though such prior user were
shown to be merely in private or in secret.
The material observations of Parker J.in that case are these 13 : —
“ It is not suggested in this case that Nobbs’ invention was,
prior to the 26th November 1894, published otherwise than by user,
and I do not think it was seriously suggested that it was used in
such a way as to amount to publication. At any rate I hold on the
evidence that there was no publication by user. It was, however,
argued that, on the wordB of the 6th Section of the Statute of Mono-
polies, “which others at the time of making such Letters Patent
shall not use”, there may be contemporaneous user not amounting
to publication which will avoid Letters Patent. In my opinion this
argument is well founded. Suppose A invents a process for the
manufacture of dyes, keeps the process secret and continues to
manufacture and publicly sells dyes, manufactured according to the
process, the sale of the dyes which might be made by any process,
may not amount to a publication, of the invention, but I think that
*■ (1907) 24 E.P.C. 273.
*• i.e. (1907) 24. R.P.C. 273 at p. 290
Ch. VI]
PRIOR USER AND PUBLICITY
177
A is using the invention in suoh a way as to preclude B, who subse-
quently makes the same invention from obtaining valid Letters
Patent in respect thereof. This at any rate would appear to be the
effect of the Judgements of Mr Justice Earle and Lord Justice
Campbell in Heath v . Unwin (2 Webs, at pages 277, 278 ; 3E&B
at pages 272, 273 ) ; and TennanVs case ( 1 Webs. 125). The ques-
tion however remains whether Nobb’s invention was in fact being
used within the meaning of the Statute of Monopolies when the Pla-
intiff filed his Provisional Specification. I cannot find that the
single gun which was completed before this time was ever sold or
used at all except by being tested at the Defendant’s private range,
it was when tested forwarded to the Patent Agents and remained
with them until the 4th of October. It was then returned to the
Defendant’s firm, who fitted it with a new trigger plate, and after
that there is no evidence what became of it. There was a second
gun of the same type commenced, but not finished until after the
Plaintiff’s Provisional Specification was filed. The evidence of user
therefore reduces itself to the work done on these two guns and
possibly on the action “P. A. N. 3” prior to the 26th of November
1894, and I have come to the conclusion that this evidence is
insufficient to justify me in holding the Plaintiff’s Letters Patent to
be invalid because of any user by Nobbs or the Defendant’s firm
of the invention ” (The learned Judge then proceeded
to consider other objections which were raised against the validity
of the patent on other grounds.) 14
It is this aspect of the matter which is evidently also referred
to in Fletcher Moulton on Patents 15 when he states that “prior user
of the invention may also in certain cases defeat a patent
quite apart from the question of publication”. Except for a note
in which reference is made to certain cases he does not however
explain the matter further. Indeed the part of the work dealing
with prior user forms a part of the chapter headed “Public Know-
ledge”; and in the main the question of prior user is treated merely
as a matter relating to a medium of publication.
14 See also Four Oxidising Co. v. Carr (1903) 25. R. P. C. 428 at p. 457
(there public user was refered to) ; Wright & Eagle Eange Ltd . v. General Qas
Appliances Ltd. (1908) 46 R. P. 0. 169 C. A.
16 1918 edn. p. 67.
23
178 THE LAW OF PATENTS IN INDIA [Ch. VI
It is this aspect of the matter which must be intended to be
referred to also in Hadden 18 when after treating of prior user con-
sidered as a publication, he goes on to say “prior user may also be
considered from another point of view, as we shall refer to later”.
After proceeding to a consideration 17 of secret user, he then comes
to a conclusion, after considerable doubt but relying in the main
on Robertson v. Purdey (supra), that “on the whole it appears (from
the cases considered) that where a definite prior use by others is
provable it will invalidate the patent even though the use was
secret”.
Now it is well settled, it is submitted, as to novelty that in a
case where A applies for a patent and it is shown that B had know-
ledge of that patent in secret and even went so far as to manufac-
ture it in secret, these facts do not amount to a want of novelty in
the meaning of Patent Law such as to create a bar to the grant of a
Patent to A. Accordingly it follows that if a manufacture by B in
secret (as suggested in the passages in the judgment of Parker J.
and in Haddan abovementioned) is to be held to be a bar to the grant
of the patent to A, then this bar must arise for some reason inde-
pendent of any reason based * on want of novelty. On such a view
therefore the bar of prior user would require to be considered
entirely independently from the bar which arises from want of
novelty.
In the course of arriving at the conclusion mentioned Mr.
Haddan observes “It may be considered questionable whether a
secret use of an invention by others is sufficient to prevent a patent
being afterwards legally held by a bonafide inventor. On the one
side there is the Statute of Monopolies, which distinctly states that
only such new inventions shall be patentable “which others at the
time of making such Letters Patent shall not use.” On the other
side there is the fact that the inventor introduces to the general
public what, to them at least, is new and otherwise undiscoverable
without invention ; so no failure of consideration can be urged
against the grant.”
It is thus seen that the whole foundation for this view is the
wording of the Statute of Monopolies in the passage noted : viz :
16 Haddan p. 101.
17 See Haddan p. 104 & 105.
Ch. VI]
DEGREE OF PUBLICITY
179
"Provided also that any declaration before mentioned (that
is the' declaration that monopolies are illegal) Bhall not extend to
any letters patent hereafter to be made, of the sole working
or making of any manner of new manufacture within this realm
. which others at the time of making such grants shall not
Now just as the words in that section comprise the sole provi-
sion in the statute which can be said to make any reference to prior
user as a bar to the grant of a patent, so also the words in that
section are the only ones which refer to want of novelty as a bar.
The trnth is, it is submitted, that the legal principles now in force
regarding novelty in general and prior user in particular have
originated out of the Common Law equally as from this section :
or at least have originated from the established interpretation which
by the decision of decided cases has come to be put on the
section.
There are various stages by which an invention can pass from
being completely new to being widely known and widely practised.
In the first place a man has an idea : the idea having got no further
than a thought within his mind. He may even gives his idea actual
expression either on paper by describing it in words, concretely
by manufacturing an article which embodies and demonstrates the
idea. But if he does not show the expressed description or form
to anyone, the idea is still as much private to him as when it was
merely in his mind. Then he may desire to communicate his idea
to someone else. To do this he must cither describe his idea by
words, which he may communicate to the other person either by
sound in the air or on paper by writing, or he must embody his idea
in a concrete form in a thing of three dimensions which he must
show to the other person. Before the idea can become widely known
either the oral or written expression of it must be widely circulated
or the thing in three dimensions must be made in great quantities
and must be shown and seen and used by many persons.
One prevailing principle underlying the Common Law and the
Statute of Monopolies has always been that a monopoly will not be
granted to a man except in return for his communicating to the
state an idea which was not known but for his so oommunioat-
ing it.
180
THE LAW OP PATENTS IN INDIA
[Ch. VI
Another prevailing principle underlying the Common Law and
the Statute of Monopolies has always been that there cannot be a
good monopoly preventing other people from manufacturing what
they have been manufacturing hitherto.
The idea underlying the one principle seems to be that the
man asking for a monopoly must earn it, and must give some con*
sideration for the grant. This directly concerns the grantee.
The idea underlying the other principle seems to be that the
rights of other persons apart from the man asking for the monopoly
must not be injured ; and that even the Crown has no right to
prevent its subjects from continuing to do that which they have
hitherto been lawfully doing. This directly concerns persons other
than the grantee.
Both principles may be expressed in terms of “novelty” and
“prior” user by stating that the invention must be novel and that
there must not have been any prior user of the invention.
(It would seem that the underlyiug notion of both principles
is the same. For even where' there has been no actual user if the
public has the mere knowledge of an invention they must it is
submitted have the right to put their knowledge into use. It might
be that in a case where several persons had already by actual user
of an invention engaged in a particular line of manufacture, their
grievance would be the more exphasised if a monopoly were to be
sought by someone which would stop them from manufacturing,
than in a case where they had the knowledge of the invention but
had not yet started upon using it or upon manufacture. But the
difference it is submitted is one merely of degree and of emphasis
only. Thus the real and only single principle underlying both the
Statute of Monopolies and the Common Law in this respect is that
a monopoly will not be legally granted for an invention which is not
substantially new. And a case of prior user is merely a specific
instance of a want of novelty.)
In regard to both matters a question arises as to what degree
of publicity if any in either case is postulated : in the one instance
for an invention to be held not novel and in the other instance for
there to be held to have been prior user of the invention.
■ In the one respect if the degree of novelty demanded were
cat. VI] IS PRIOR USER ANY BAR APART FROM WANT OF NOVELTY 181
required to be a 100% novel, then in a case where A was the appli-
cant for a patent for an alleged invention and B (one man only)
had in fact had previous knowledge of the invention even if this
knowledge had been confined to the inside of B’s mind, yet strictly
speaking the invention should not properly be held novel. The
result would be the same whether in fact A had communicated the
invention to B or whether B had arrived at the knowledge of the
invention independently. There would be no 100% novelty even if
B had not expressed or communicated his idea to any single other
person.
In the other respect if the degree of absence of prior user
demanded were required to be a complete and total absence of
prior user, then if B (one man only) had embodied the knowledge
of the invention into anything of three dimensions, and had thus
"used” it, then strictly speaking there should properly be held to
be prior user. There would be no 100% absence of prior user even
if B bad not shown the thing he had made to any other person.
It is submitted that neither “novelty” nor “prior user” in the
meaning of Patent Law connote any such meanings.
It is to be observed that the word used in the Statute of
Monopoly is not “another” but “others” : denoting even grammati-
cally at least more than one.
In any event it is submitted that for there to be a want of
novelty, it is meant that the invention will have been at least widely
enough known to be said to have been public knowledge. Also
that for there to be a prior user, it is meant that the invention will
have been at least widely enough used for it to be said that there
has been public user. At the same time this does not of course
mean knowledge or user by the whole public.
It will be seen, it is submitted, that there is ample authority
in the decided cases for this view : both from the earliest times and
in most recent oases. In faot this somewhat lengthy dissertation
on this point at this stage might not have been called for at all'
had it not been for the very definite contrary view expressed by
Parker J. in the case of Robertson v. Purdey 18 and for the tentative
expression of a similar view by Mr. Haddan and the fact that the
>»
(1907) 24, R.P.C. 273.
182 THE LAW OF PATENTS IN INDIA [Ch. VI
point ia evidently one which requires elucidation and calls for an
authoritative ruling one way or the other.
It is submitted then that the view which appears stated in the
observations in the Case of Robertson v. Purdey 19 to the effect that
a prior user even by one other person even in secret is a bar to the
grant of a Patent is unsound. Though it does not appear that this
ruling in Robertson v. Purdey has ever been expressly criticised
or overruled, yet it is submitted that it could not be supported or
followed logically without going against the decisions of innumer-
able cases in which it has been held in effect that want of novelty
signifies knowledge to a wide extent by some portion of the
public ; and that prior user signifies user to a wide extent, also, in
public.
The observations previously cited of Parker J moreover
appear now to have become inapplicable even in the United King-
dom since the subsequent amendment of Section 25(2) of the
English Act.
Furthermore in British India all doubt on the point would
appear to be eliminated by the terms of Section 38(1) by which it
is provided that : —
“An invention shall be deemed a new invention within the
meaning of this Act.
(a) if it has not, before the date of the application for a
patent thereon, been publicly used in any part of
British India, or been made publicly known in any
part of British India,
(b) if the inventor has not by secret or experimental user
made direct or indirect profits from his invention in
excess of such an amount as the Court of the
Governor-General in Council, as the case may be,
may, in consideration of all the circumstances of the
case, deem reasonable.”
From the wording of that section it seems clearly to follow that
in British India (with the sole exception of secret or experimental
user with unreasonable profits by the inventor himself) the only
*• See above at p. 176
CL Terrell (8th Edn.) p. 90 & 91 : contrast Terrell (7th Edn.) p. 64.
Ch. VI]
USER IN PUBLIC
183
user which will invalidate a Patent is “public user”. This public
user it is submitted, can only mean such user as is accompanied by
such publicity as will have created public knowledge.
If this correct, then, whatever the origin of the principle
by which prior user came to be a bar to the grant of a patent
— even if this was for reasons connected with the protection
of the rights of the public which differed in origin from
reasons connected with the nature of the consideration moving from
the grantee — it now becomes unnecessary in practice to treat of
prior user except as an instance of want of novelty. For it will be
found that a prior user, which is unaccompanied by a degree of
publicity enough to establish want of novelty, will have no effeot
as a bar to the grant of a patent.
The matter is not one of merely academic interest relating to
the merits in logic of two alternative methods of arrangement of
this book. The matter goes deeper than that. For if the view is
taken that prior user is a matter independent of novelty, then one
degree of publicity may be demanded to create want of novelty
which will be a bar to the grant of a patent, while a lesser degree
of publicity, or no publicity at all, may be demanded to create a
user which will also be a bar to the grant of a patent. On the
other hand if prior user is only a form of want of novelty, the
degree of publicity having been once established which is requisite
for want of novelty in order to amount to a bar to a grant, the
same degree of publicity will be requisite for prior user in order
that that shall amount to a bar to a grant.
In these circumstances the topic of prior user in the present
work is treated only (save for the possible exception only of user
in private with unreasonable profit by the inventor himself) as a
matter subsidiary to the topic of want of novelty.
User in Public.
Prior user means then it is submitted, that there must have
been a prior public user : accompanied, it is submitted with enough
publicity to amount to publication of the invention. But it will
be sufficient if the user is in public even though it be not by the
public. The proposition was long ago established by the following
passage in the judgment of Lord Abinger C.B. in Carpenter v. Smith
184
THE LAW OF PATENTS IN INDIA
[Ch. VI
in these words 20 : — The “public use and exercise" of an invention
means a use and exercise in public, not by the public". The obser-
vations of Baron Alderson, were to the same effect : — "Public means
a use in public ( so as to come to the knowledge of others than the
inventor, as contradistinguished from the use of it by himself in
his chambers." As authority for the same proposition the case
known as Dollond’s case is also commonly referred to. This was
a case in which Dollond was the Plaintiff and patentee in a suit
for the infringement of a Patent for a new method of making the
glasses of refracting telescopes. At the hearing it was proved that
one Dr. Hall (not connected with the Plaintiff) had made such
glasses in 1720, but had not disclosed the secret and the public were
not acquainted with it. The Patent was supported. 21
The language of Baron Pollock in Croysdale v. Fisher. 22 as
reported in Edmunds on Patents may with advantage also be cited
here, the original report being not easily accessible. The material
passage is as follows : —
“It is obvious that in almost all cases of user, it does not
profess that there is a publication to the world, as there is in the
case of a specification, or in' the case of a book that is largely
disseminated ; because the more, perhaps, as different modes of
refinement, variations and improvements continue to multiply, the
more does it happen that one portion of the manufacturing world
does not know what is going on or what is being done by another
portion. Certainly still more does the public not know with very
great nicety, unless concerned either as manufactures or traders,
what is going on in the different laboratories or manufactories
attached to any particular trade. When it is said that a process
has been disclosed, or an invention has been disclosed by means of
user, it is necessary that such user should be a user by the public
proper, provided only there is a user in public, that is to say,
in such a way as contradistinguished from a mere experimental
user with a view of patenting a thing which may or may not be
existing."
•» (1842) 0. M. & W. 300.
(1 See Edmunds p. 39 & 40 ; Betts v. Menxics (1857) 8 E. & B. 937. See
also Betts v. Neilson (1868) 3 Oh. 431 per Lord Chelmsford L.O.
(1884) 1. P.O.R, at 21 as cited in Edmunds at p. 40.
Ch. VI]
FKIOR USER BY SALE
185
Prior public user by sale.
The novelty of no invention will be destroyed by the prior
public sale in British India of the same or a similar invention
whether manufactured in British India or abroad . 23
There will be no ' anticipation where the invention itself has
not become public knowledge ; as in cases which will occur where
the article may be sold which is the result of the invention yet an
inspection or an examination or even a chemical analysis of such
article will not disclose the invention itself.
On the other hand in cases where the Patent related to alloys
and where a sale of similar alloys was relied on as a prior user
invalidating the Patent and where the nature of the alloys could be
ascertained by chemical analysis but not otherwise, it was held that
such prior user did amount to an anticipation. Lord Hanworth in
Boyce v. Morris Motors Ltd , 24 speaking of one of those cases, that
of the Stahlwerk-Becker Patent, said : —
“Then there was another case to which Mr. Trevor Watson
referred, that of the Stahlwerk-Becker Patent, in which some steel
had been sold of a particular chemical composition, and the Lord
Chancellor, Lord Finlay, said that, inasmuch as it had been sold,
there was a publication. He said : “I think it would be very
dangerous to introduce the doctrine which your Lordships are now
invited to introduce, either that it must be actually shown that the
knowledge had been acquired by some individual, or that there is a
high probability that it had, in fact, been acquired. The law as to
prior user seems to be this, that if the article has been manufactured
and sold, that gives the means of knowledge to the purchaser, and
that is enough to establish prior user.” Of course one accepts that ;
and indeed I do not know how information could be better conveyed
than by the actual sale of a product for such are the researches and
such the possibilities of analysis, that it was comparatively easy to
discover what the composition of it was .” 2 8
This same question, how far the sale of an article embodying
” Bee Edmunds p. 43 citing Lister v. Norton (1860) 3. P.C.R. 208-210 and
Deutsche Nahmaschinen Fahrik etc. v. Pfaff (1390) 7 P.O.R. 16.
34 (1919) 36. R.P.C. 211.
98 And see Miller’s Patent (1898) 15. R. P .0. 205 at p. 211; also Hills v.
London Gas. JAght Oo. 5. H & N 312.
24
186
THE LAW OF PATENTS IN INDIA
[Ch.VI
the patented invention will be a public user so as to constitute
anticipation came up for consideration by the court in India in the
reported case of Lallubhai etc. v. Shamaldas etc. 2 2 to which reference
has been made ante at page 154. In that oase it was held that
though almonds, which had been manufactured by the patented
process, had been publicly sold, there had been no anticipation
because it was not possible from an inspection (or it seems even a
chemical analysis) to discover the nature of the invention. A deci-
sion in an earlier Calcutta case 27 appears to have been to some
extent dissented from by both of the learned judges of the Bombay
High Court. The following observations were made by Beaumont
C. J. in the Bombay case 28 : —
“Now in considering how far the sale of an article manufac-
tured under a secret process amounts to a public user of the process,
we have to remember the terms of s. 38 of the Indian Patents and
Designs Act of 1911. The section provides that an invention shall
be deemed to be a new invention where two features are absent.
The first feature is the public user of the invention in British India,
and the second feature is secret or experimental user in which the
Court considers that excessive profits have been made. So that you
have two things, public user or private user for excessive profits, 29
which will prevent the invention being a new one, and these two
matters seem to be based on two principles underlying the law
relating to patents, the first being that there must be no disclosure
to the publio before the letters patent are applied for, since, if
the public already knows the secret there is no consideration for
the patent ; and the second being that even if there is no public
disclosure, still if the patent has been used and considerable profits
have been made, it is not reasonable to grant a further monopoly.
Now, in this case, there is no allegation in the written statement
of, and no issue is directed to, secret user, and therefore, we have not
to consider the question whether the plaintiff made excessive profits
from any such user. The only issue is, whether there was a public
user. Mr. Khan referred us to many cases including Wood v.
*• (1934) 36. Bom. L.R. 881.
*' (1896) 23. Cal. 702.
'• (1934) 36. Bom. L.R. 881 at p. 887.
11 It is to be noticed that the Act refers to private user by the inventor
only.
Ch. VI]
SALE OF PRODUCT FROM SECRET PROCESS
187
Zimmer 30 , Heath v. Smith 31 , Carpenter v. Smith 32 , and In the Matter
of the Inventions and Designs -Act 33 , and he contended on the
strength of those cases that if artioles are manufactured under a
secret process and then sold openly, that amounts to public user
of the process. The principle enunciated in the Calcutta case as
being that established by the English cases is that where profit
is openly derived from the employment of a secret process, there is
a public user of such secret process. Now, it is to be noticed that
none of those cases were dealing with an Act in the terms of s. 33
of the Indian Patents and Designs Act of 1911, which distinguishes
clearly between public user and private user. Whether a process
has been publicly used or not is, as all the cases show, a question of
fact. I have no doubt that in numerous cases the sale of an article
manufactured under a secret process may amount to a public user
of the process, because the article may be of such a character that
anybody buying it and getting it examined by experts can ascertain
the secret of its manufacture, and if the article is of that character,
the sale of the article in public would, in my opinion, involve a
disclosure of the secret of manufacture and thus amount to public
user of the process. But in this case the article manufactured is an
almond treated by a particular process which makes the shell whiter
and smoother than the shell in its natural state, and I do not
myself see how anybody purchasing an almond treated by this
process could ascertain the method of treatment, and there is
nothing in the evidence on record to lead me to think that this view
is wrong. It seems to me that,' at any rate in a case to which the
Indian Patents and Designs Act applies, if you have an article
manufactured under a secret process and that article is of such a
character that nobody by examining it can find out the secret of
that manufacture, then the sale of that article in public cannot
amount to public user of the process. That is the case here and,
therefore, in my judgment, the defendant has not succeeded in
showing that the process of the plaintiff had been publicly used
prior to the issue of the letters patent/
The judgment of Rangnekar J. turned primarily on considera-
80 (1815) Holt 58.
81 (1854) 8 EL & BL 256.
88 (1842) 9. M. & W. 300.
88 (1896) 28. Cal. 702.
188
THE LAW OF PATENTS IN INDIA
[Ch. VI
tions of the degree of secret user allowed under the Act, reaching
a similar conclusion on the main point that there had been no
anticipation by prior user. It is to be noted that the Calcutta case
mentioned 34 was decided when the act then in force in so far as it
related to secret user differed from the present act. The deoision
in that respect is therefore no longer of interest. As to the point
now under consideration it would seem doubtful whether there was
any decision in the Calcutta case on this point. But if the judg-
ment of Sale J. were to be understood as deciding that any public
user of a resultant article made by the patented process is neces-
sarily a public user of the invention and an anticipation thereof,
then it is submitted that such a view is unsound.
Prior public user by steps preliminary to sale.
It has been held that there may be prior public user of an
invention where the thing constituting the invention has been
merely handed about the country for the purpose of attracting
customers although no actual sale has taken place. 35 In Oxley v.
Holden it was suggested, obiter, by Byles J. that the offering of
even a sample for sale was a user : and a decision to this affect
was given in the more recent case of Hudson Scott db Sons Ltd.
v. Bnninger , Wallis & Manners Ltd. 96
Prior user in private by persons other than the patentee.
Considerable doubt has arisen as to cases where there has been
in fact prior user by persons other than the patentee not in public,
but in secret, or at least in private. This matter and the general
principles affecting the question have already been discussed at
page 177 et seq.
It is submitted, for the reasons already mentioned, that the
better view is that such secret user will be no bar to the grant of
a patent. It is submitted there is no sufficient publicity of know-
ledge of the invention shown in such a case as will create any
ground for objection for want of novelty ; and that there is no
failure in the consideration supplied by the Patentee in making
** i.e. In the matter of the Inventions and Designs Act (1896) 23 Cal. 702.
'* See Edmunds p. 43 citing Hancock y. Somervell (1811) 39 New Lon. Jour.
158 ; also Mullins v. Hart (1852) 3 Car. & K. 297 ; Oxley v. Holden (1860) 8.
C.B. N.S. 666 ; 30 L. J. C.P. 68 and other cases.
•• (1906) 23. B.P.C. 79 at 87.
Ch. VI] SECRET OR EXPERIMENTAL USER 189
known the invention : and that, for the reasons already stated, there
is noreason, based on the Statute of Monopolies or otherwise, why
such prior use should in itself (apart from the question of novelty)
be held to be a bar to the grant of a Patent. .
Reference may be made to the terms of Section 38 of the
Indian Act of 1911. It will be seen that this section refers to (i)
publio user (by anyone) and (ii) secret or experimental user by the
inventor by which he has made more than reasonable profits. The
question' therefore is whether prior user in private by persons other
than the patentee is to be considered to be within the meaning of
the term “public user” as used in that section. For the reasons
already explained it is submitted that even if the matter were free
from authority, it is not. In India there is direct authority for this
view in the case of Lalliibhai etc. v. Samaldaa (already fully
referred to).
Experimental user by person other than the patentee.
This matter also is covered by the remarks already made. If
the observations of Parker J. were to be taken to give a correct
view of the law, then even experimental user by persons other than
the inventor might be said to be a bar to a grant of a Patent.
If the other view more commonly held which has been submitted
as the better view is taken to be the law, then experimental user
by others should be treated as having no greater effect than experi-
mental user by the patentee; and should not be held to create any
want of novelty or be any bar to a grant. There have been cases
decided in which the latter view has been adopted. It would appear
that where the experimental user has been by persons other than
the patentee more strict limits have been put to what constitutes
mere experiment. 37
Prior user by others which has been abandoned before grant.
The question whether a user which has been abandoned before
the date of the grant, invalidates such grant is one as to which
there has been no dear decision. Probably the true test is : has
the manufacture been so completely abandoned that but for the
patentee’s discovery it would in all probability never have been
heard of again ? 33
* f See Weetley v. Tolley 11. R.P.0. 602, 607.
** See Fletcher Moulton p. 63 and cases there cited.
190
THE LAW OF PATENTS IN INDIA
[Ch. VI
It has been held that user in public or in the presence of
workmen without any special or implied injunction as to secrecy
and for ordinary manufacturing or trading purposes is such a prior
public user as to constitute want of novelty even if such use has
been abandoned. 3 "
Possibly if the user has been so long ago as to have been
forgotten, such user will not be considered to create a want of
novelty.
Accidental or unconscious user by others.
It is suggested in Terrell on Patents 40 that a mere accidental
user is not of itself sufficient to invalidate a subsequent Patent.
A passage in Harwood v. Great Northern Railtvay 41 is relied on for
the view suggested. Against that view however it is to be sub-
mitted that, while the knowledge of the user himself is negatived
in the circumstances of his accidental user and that therefore, if
there is no question of knowledge of the invention having been com-
municated to others by his user, his user alone will not be an
anticipation, yet apart from this the intention of the user is really
immaterial : and that the true test will depend on whether the use
in question, in fact, whether with or without the knowledge of the
user himBelf, communicated knowledge of the invention to others
so as to make the invention public knowledge.
In practice naturally this will be less likely to happen if the
user himself does not appreciate the invention.
Prior private user by the inventor himself.
Even in the older cases a principle appears to have been
enforced that an applicant for patent is not entitled to a valid
30 See Fletcher Moulton p. 68 ; citing the following cases : —
Humperson v. Sycr (1887) 4. R.P.C. 407 (C.A.) ; Lifeboat Co. v. Chambers
(1891) 8. R.P.C. 418 : Wesley Richards v. Perks (1893) 10. K.P.C. 181 :
Haggenmackers y. Watson (1897) 14. R.P.C. 631. (C.A.) Haggenmacker’s Patent
(1898)15. R.P.C. 437 : MeUay v. Latccs (1905) 22. R.PC. 199: Gramophone
Go. Ltd. y. Uuhl (1910) 27. R.C.P. 629 : Househill Co. v. Neilson (1843) 9. C. &
F. 788, 781 : Lewis v. Marling (1829) W.P.C. 490. Compare also Tangye y. Scott
14W.ft.386.
44 8th edn. page 87.
41 29. L.J. Q.B. 193 at p. 202 : reversed on another ground in the House of
Lords see 35. L J. Q.B. 27.
Ch. VI] PRIOR USER BY THE INVENTOR 191
grant in a case where he has secretly manufactured the invention
previously. This proposition cannot be based on the same reasoning
as that which supports the principles already referred to relating
to the prior user by others. For in a case of prior secret user by
the inventor himself there can be no question of other persons being
stopped from doing that which they have been doing or had the
intention of doing hitherto, nor, it is submitted can there be any
question of the invention, when he discloses it, being not novel,
nor can any objection be taken for his not giving some considera-
tion for the grant by disclosing his invention to the State. The
bar to a grant of patent in such a case as this must be founded it
seems entirely or chiefly on other considerations.
It may be that the objection to the grant is to be put upon the
ground that as the inventor is expected to disclose his invention to
the public within a reasonable time, his working of the invention in
secret is to be regarded as something of a fraud upon the public ;
and that the grant is to be barred or invalidated on that ground.
Or it may be that the objection is to be put upon the ground that
by the period of such secret user the invcntor-Patentee would
undesirably prolong his monopoly.
It is difficult nevertheless to understand how it can be said
with any real force in most of such cases that the monopoly is
prolonged. The observations of Lord Campbell C. J. in Betts v.
Menxies 42 arc of interest. He said : —
“Upon the first point, my opinion is clearly in favour of
the Plaintiff. The question arises upon the evidence.
Upon the trial it appeared that the plaintiff 1 , who really
was the inventor, though the invention may be so
imperfect as to deprive him of all benefit to be derived
from it, gave directions that the patent should be
applied for aB soon asjhe had made the discovery ; it
was applied for quam primum, but from some unfore-
seen delays in the office, it was not granted within the
usual time. In the meantime the plaintiff manufac-
tured capsules according to the new process, but only
under the cognizance of his partners, and of his own
men, and with the express injunction that none should
4 * 28 L.J. N.8. (Q.B.) 361 at p. 365.
192
THE LAW OF PATENTS IN INDIA
[Ch. VI
be sold, and none were sold until the patent had been
granted. Under these circumstances, I am of opinion
that the manufacturing of the capsules according to
the new invention would not invalidate the patent. I
quite agree that if you look at the section of the Statute
of Monopolies which has been referred to it abolishes
monopolies altogether, and that there was no power in
the Crown, after that statute passed, to grant mono-
polies, except with the conditions that are imposed by
the reservation, but tho reservation which must be
relied upon here is this, “which others at the time shall
not use.” Now, others had not used this before the
patent was granted. It was used only by the inventor,
the patentee himself, and the use of it by the servants
and mechanics whom he employed must be considered
to have been his use, and therefore it was not used by
others. But, still, if it could be shewn that the effect
was really to extend the time of the monopoly, that
would be fatal. But the defendant has entirely failed
in shewing that, because any person might have used
this manufacture lawfully, until the patent was sealed
and the fourteen years had begun to run, there was a
period of more than fourteen years during which the
monopoly existed. That period was not in the slightest
degree exceeded, and no inconvenience or grievance is
caused to any one individual nor to the country, by
saying that this manufacture of the capsules according
to the new process before the patent was sealed, shall
not invalidate the patent.” 43
At the present day in India the degree of prior user in private
permitted to the inventor himself is regulated by Section 38(1) of
the Act of 1911.
The effects of this section in this regard were referred to,
obiter, in the case of Lallubhai etc. v. Shamaldas already mentioned 44
but as there was no direct issue arising on the point in that oase
*' See Fletcher Moulton p. 67 note (f) and Terrell p. 83 where the point is
discussed and certain cases cited.
(1934) 36 Bom. L.R. 881.
44
Ch. VI] SECRET USER FOR UNREASONABLE PROFIT 193
there was no direct decision of any point which materially adds to
the wording of the Section as it stands. The following extract
of one passage among the careful observations of Bangnekar J. may.
however be of interest as an indication showing how the point
should be pleaded in a case in which an issue was to be raised on
Section 38(1). The learned Judge in dealing with a certain aspect
of the facts in that case observed “In my opinion this would be a
secret user of the process by the Plaintiff, and if I am right in this,
then Section 38(l)(b) would at once come in, and it would raise the
question whether the profit made by the plaintiff was unreasonable.
There was no pleading to this effect, no issue and no evidence and, I
think this is one of the complications introduced in the case by reason
of the amendment of the issue, which the plaintiff had never any
opportunity to meet. If the defendant had said that the plaintiff used
this process for profit or commercially, the latter could have pleaded
that it was not a public user but a secret user. I think he might also
have contended that it was an experimental user for profit, which
under Section 38 is allowed and does not vitiate the invention.”
Mere experimental user by Patentee creates no want of novelty.
It has long been decided that mere experiment by the person
who subsequently becomes the patentee creates no want of novelty
and does not invalidate or avoid the grant of patent to him.
As was said in one case, “a man is entitled to make experiments
in fact, he is bound to do so. No man can draw up a Specification,
which will have the slightest chance of holding water, without testing
the results which he is going to state in that Specification, and he is
entitled to make experiments ; and so far as Mr. Thompson’s
experiments are concerned I see no reason for doubting that secreoy
was observed, and that he and his employes kept the results of those
experiments — that is to say, the particular plates which they printed
— to themselves. So far there was no publication. A man is entitled
to do that ; he is entitled to do more than that ; he is entitled to ask
his friends confidentially to advise him, taking care that they are not
so many that they may be regarded as a portion of the public. He
is entitled to have the assistance of experts to tell him what things
can be done and what things cannot be done.” 45
44 By Kekewich J. in Hudson , Scott db Sons Ltd . v. Baning , Wallis db
Manners Ltd . (1906) 23 R. P. 0. 79 at p. 87. Bee also Osram Lamp Works Ltd . v.
“Z” Electric Lamp Manufacturing Coy, Ltd . (1912) 29 R. P. G. 401 at p. 429.
25
194
THE LAW OF PATENTS IN INDIA [Ch. VI
But, as already indicated it is incumbent on the inventor not
to delay unduly before making his application.
This experimental user is to be distinguished from a case where
the future patentee manufactures the invention commercially, while
keeping the secret of the invention to himself.
Provided the user has not been more than what was generally
necessary for the inventor to satisfy himself as to the practicability
of the invention, or as to the best form of the invention, it is classed
as experimental : it is otherwise if it has exceeded these limits and
has been carried on for profit or for the ordinary use of the
invention. 4 *
It is proposed next to turn from anticipation by prior user to
the consideration of documentary anticipation.
Anticipation by documentary publication.
The form of document through whicli the anticipation may
have been effected is immaterial 47 as is illustrated by the following
cases.
A book or treatise : — Clearly if it can be shown that before the
date of application for a Patent, particulars of the same invention
were contained in a widely circulated book published previously in
British India, there will be no question but that the invention
applied for has been anticipated and is not new. It is another
matter however where all that can be shown is that the particulars
were contained in a book, which, say, was printed abroad and sent
into this country unopened ; of which nothing more than the binding
can be shown to have been actually seen by anyone in the country.
It may become a highly doubtful question in certain particular
cases whether there has been sufficient prior publication to show the
existence of public knowledge such as to create want of novelty. It
is submitted that the statement of the law given in Terrell is not
correct 48 to the effect that “mere exhibition in a book-seller’s window
for sale or sending it to a book* seller in this country to be published,
is a sufficient publication.” This point is further considered below.
44 See Fletcher Moulton p. 71 note (f) and the illustrative cases there
cited. (Regarding fortuitous user by others see also John Wright and Eagle
Range Ltd. v. General Gas Appliances Ltd. (1929) 46. R.P.0. 169. (G. A.) at p. 175.)
*'• Bee page (7) ante.
411 8th edn. at p. 93
Ch. VI] DOCUMENTARY PUBLICATION 195
For illustrative cases reference may be made to Plimpton v. Mal-
eolmson 4 \ Plimpton v. Spiller, Lang v. Gisborne (criticised in
Plimpton v. Malcolmson above), Otto v. Steel (below).
A scientific work in a museum or public library : —
See eg : Otto v. Steel. 60 •
A previous Indian specification :
This is one of the commonest forms of alleged documentary
anticipations.
A previous foreign specification deposited in the library af the
Patent Office : —
See eg : Harris v. RothweU. 61
An abridged foreign specification deposited in the library of the
Patent Office . —
See eg : Plimpton v. Malcolmson (above) where one of the
documentary anticipations relied on was an American Abridgement
in the Report of the Commissioners of Patents of the United States
of America for the year 186B.
An Official Board of Trade Report : —
See eg : Paterson v. Gas Light <ft Coke Co. 6 2
Drawings or illustrations : —
There may be a sufficient publication and anticipation through
mere drawings. See eg : The Underfeed Stoker Co. Ltd ; G. <&
J. Weir’s application ; Mooney’s Application .® 3
A document in a foreign language : —
The fact that the document relied on as an alleged anticipation
is in a foreign language will ordinarily be immaterial. As was re-
marked by Chitty J. in Harris v. Rothwell (supra), “German cannot be
*• (1876) 3 Ch. D. 558 at p. 562 ; (1876) 6. Ch. D. 412 ; (1862) 31. L. J.
Ch. 770.
*° (1885) 31. Ch. D. 241.
5 * ( 1887) 35. Ch. 1). 416 (No. 1 ) 3. R. P. C. 243, and (No. 2) 3. R. P. C. 383,
and 4 R. P. C. 225 (C. A.)
•* (1876) 3. A. C. 239.
" (1924) 41. R. P. C. 622 ; (1925) 43. R. P. C. 39 ; and (1927) 44. R. P. C.
294 respectively. See also Plimpton v. Spiller (1877) 6. Ch. D. 194. C. A.
at p. 198; Eleetrvs Construction Co. Ltd. v. Imperial Tramways Co. Ltd.
(1900) 17. R. P. G. 537 at p. 650 j Cf. Haddan at p. 199 ; Terrell p. 100.
196
THE LAW OF PATENTS IN INDIA
[Ch. VI
treated in this country as an unintelligible language” German Speci-
fications at the English patent office were held to be a prior publica-
tion in that case. In Otto v. Steel (supra) a book in French at the
British Museum was relied on as a prior publication. Though it
was held by the Court, for other reasons, that there had not been a
sufficient publication, this decision was not affected by the fact that
the book was not in English. 64
Importance ot the question what degree ot publication or publicity
in publication will amount to want ot novelty.
The question whether in a particular case there has been
sufficient publication frequently at the present day arises in regard to
opposition proceedings.
The present material provisions of the English Act of 1907-
1932 contained in Section 11 (1) (b) relate to objections on certain
grounds worded as follows : —
"That the invention has prior to the date which the patent
applied for would bear if granted been published in
any complete specification, or in any provisional spe-
cification followed by a complete specification, deposi-
tedjpursuant to any application made in the United
Kingdom and dated within fifty years next before such
date, or has been made available to the public by publi-
cation in any document (here follow certain excep-
tions) published in the United Kingdom before such
date.”
The question, what is sufficient publication, thus directly arises
in connection with the actual present wording of that section.
The provisions in force in India corresponding to those cited
and denoting the grounds on which opposition may be made for want
of novelty in respect of documentary anticipation are contained in
Seotion 9 of the Indian Act of 1911 ; worded barely and without
detail as follows ; —
® 4 See also Lattg v. Gisborne 31. L. J. Ch. 769 which though since dissent-
ed from on' another point, stands good law on this point. . And see eg : Harris v.
Rotkwell (1887) 4. R. P. C. (C. A.) (particularly) at p. 231; Rtieker v. London
Electric Supply Corporattm Ltd. (1903) 17. R. P. C. 279 at p. 295. See Fletcher
Moulton p. 66. .
Ch. VI]
PUBLICATION
197
"that the invention has been made publicly
known in any part of British India.”
The words "made publicly known" also refer to publication
and publicity. The same question therefore arises in regard to this
Indian Section. It is true that the wording of the English section
given above differs from the manner in which it was worded in
England prior to the year 1919. Previously to 1919 it would appear
that there was no express provision in the earlier section 11 relating
to an objection in opposition proceedings for want of novelty on
the ground of documentary anticipation except for cases “where the
invention had been claimed in any complete specification which was
or would be of prior date” to the Patent opposed. And the statutory
words now in Section ll(lXb) “made available to the public" have
only therefore come before the English Courts for construction
since 1919. But as it was always open to an applicant in England
to obtain revocation of a Patent for want of novelty based on docu-
mentary anticipation, and as it was also always open to a Defendant
in an infringement suit to take the defence that the Patent was
invalid on the same ground, this same question, relating to the
degree of publicity necessary to make a sufficient publication to
oreate want of novelty by reason of a documentary* anticipation, has
for long been an important question of English Patent Law also in
proceedings other than opposition proceedings.
In respect of the degree of publicity fundamentally required to
amount to a sufficient publication to create a want of novelty so as
to invalidate a patent, it is submitted that there has been no change
in English Law either before the Act of 1919 or since : and that the
application of the present English Section ll(lXb) has at the most
made an alteration of procedure only, whereby it has been made
possible to an opponent in opposition proceedings to take a certain
objection (viz. that of want of novelty for documentary anticipation)
which was only a ground of invalidity open previously to 1919 at
other stages of objection to a Patent after grant.
Apart from this the question of publication may be involved
indireotly or direotly under Section 5(lXe) of the Indian Act in
regard to the enquiry made by the Controller as to novelty, under
Section 26(lXb) in regard to revocation based on a ground of want
of novelty.;! and under Section 29(2) in regard to a.defenoe on
198
THE LAW OF PATENTS IN INDIA
[Ch. VI
similar grounds in a suit for infringement. Wherever there is alleged
to be a want of novelty on a ground of alleged documentary antici-
pation the element of the question of the sufficiency of publication
or publicity is involved : even though the word “publication” is not
used in a particular part of the statute under reference.
Clearly unless sufficient publication (in some sense) is shown
to have taken place of the document comprising the alleged antici-
pation, there will be no previous public knowledge and consequently
no want of novelty. It becomes essential to consider what degree
of publicity in such publication is required to support an objection
for want of novelty.
“Publication”.
It is submitted there are two distinct questions: (i) what nature
and degree of publication is required in Patent Law to amount
to anticipation so as to create want of novelty and (ii) what evi-
dence will satisfy the Court that such publication has in fact existed
or has in fact not existed. It would appear that in some of tho
reported cases the two questions have been confused. It is proposed
here briefly to treat of them separately.
As to tbe nature and degree of publication required in Patent Law
to create want of novelty.
In Patent Law is the publication bf a document, such as must
be established in order to create want of novelty in a subsequent
patent, required to be the same in nature and degree as the publica-
tion of a document which is required to be established, for example,
to support a claim for libel : or does it differ and if so to what
extent?
It will . be found that there have been decisions of cases in
England which show conflicting tendencies on this point.
(It is submitted that in English Patent Law both past and
present the better view is that what is meant by “publication” in
Patent Law is very different from what is meant by “publication”,
for example in connection with the law of libel.)
In the first place, it is submitted, it will be found on an exa-
mination of the English oases that under English Patent Law
something more than a mere publication in the teohnioal sense in
Ch. VI]
DEGREE OF PUBLICITY
199
which that word is used in what may for convenience be spoken of
as the libel sense, is required ; and a certain substantial degree of
publicity is required.
There will be found in the cases dicta which may be taken to
favour a contrary view ; and to favour the view that any actual
publication to a single person, provided the communication is not
made on a condition that it is confidential, will be enough publica-
tion in patent law to amount to anticipation. Principal examples
of such dicta may be noted in the cases of Lang v. Oisbome (in
1862) (by Lord Romilly M. R.) and the Underfeed Stoker Company's
Application (in 1923) (by Sir Henry Slesser, S. G.) se But the first
case was criticised or dissented from by Jessel M. R. in Plimpton v.
Malcolmson and the second case was criticised or dissented from by
Sir Thomas Inskip, Solicitor-General in O. & J. Weir Ltd.’s
Application . 5 * Moreover Brett L. J. in Plimpton v. Spiller 67
made the following observations directly dealing with this
point in which he clearly indicated that mere publication in
the narrower sense was not the test : — “ Another mode of prov-
ing the fundamental proposition is to show that a description
of the invention has been published. But, then, to shew that, it
is not sufficient merely to show that it has been published in one
sheet or book. As Baron Parke himself says “published means
offered or dedicated to the public”. He then goes on to say that
the question with regard to that, is : — Was the invention published
or offered to the publio to such an extent as that it was generally
known among engineers or persons interested in the matter ? The
mere fact of its being dedicated, the mere fact of its being pub-
lished, is not sufficient it must be so far published as that you may
fairly say it is known to a sufficient number of the public.” It is
submitted in regard to what is publication in Patent Law, a correct
statement of the law which is equally applicable to-day as it was
prior to the year 1919 is to be found in the decisions of Sir Thomas
Inskip in O. <fb J. Weir Ltd.'s Application and in Mooney’s Appli-
“ 31. Bear. 133 and (1924). 41. R. P. C. 622 respectively. See also the
Judgment of Fry L. J. in Humpherson v. Syer (1887) 4. R.P.G. 407 relying on
a passage in Harris v. Rothwell and taking the same view.
* • (1876) 3. Ch. D. 531 at p. 561 and (1925) 43. R. F. C. 39 at p. 44.
* ? (1877) 6. Ch. D. 412 at p. 435.
200
THE LAW OF PATENTS IN INDIA
[Ch. VI
cation 6 9 where it was laid down in effect, that, for there to be
anticipation in patent law by a prior documentary publication there
must be for the purposes of patent law something more than mere
publication (that is to say in the libel sense) even if the communi-
cation relied on for publication is unaccompanied by any bond of
secrecy.
What that something more will be than mere publication — that
is to say what precise degree of publicity is required — depends on
the circumstances of each individual case.
To what numbers and portion of the public the publication is
required to be in order to amount to anticipation is another matter :
once the principle is fixed that there must be publication of such
a sort that it may be said to result in a dedication to the public,
it is a question of fact in each case whether the requisite degree
of publication has been effected. The question is whether the docu-
ment in question has in fact been sufficiently published to come
within the definition of being made known within the realm. Or,
as it was put by Brett L. J. in Malcolmson v. Spiller, the question is
"whether the invention was known to the public, not known to
all the public, but known to a sufficient number, so that you may
properly say it was known in England”. The following observations
bearing on this point were made by Jessel M. R. in Plimpton v.
Malcolmson. “When you say a thing is known to the public and
part of common knowledge, of course you do not mean that every
individual member of the public knows it. That would be absurd.
What is meant is that if it is a manufacture connected with a parti-
cular trade, the people in the trade shall know something about it ;
if it is a thing connected with a chemical invention, people conver-
sant with chemistry shall know something about it. A nd it need not
go as far as that. You need not shew that the bulk, or even a large
number, of those people know it.” 59 As was said by Sir Thomas
Inskip in Mooney’s Application 90 "obviously the expression “the
public” does not require the inclusion of the whole world”. And
as was said also by Sir Thomas Inskip in O. <6 J. Weir Ltd’s
Application : — 81
•* (1925) 43. R.P.C. 39. and (1927) 44. R.P.C 294 at p. 297 respectively.
• • (1876) 8. Ch. D. 531 at p. 555.
80 (1927) 44. R.P.C. 294 at p.297.
** (1925) 43. R.P.C. 39 at p. 45.
Ch. VI]
DEGREE OF PUBLICITY
201
‘‘Publication may take place in circumstances of infinite
variety, and the circumstances have to be considered in each case.
The publicity attending the occasion of a particular publication may
satisfy the words of the statute in one case ; in another case it may
be the accessibility to students of the place of deposit of the
documents, or the multiplication of copies of the documents, or
the position of the person or persons to whom the documents were
published.”
It is thus clear, it is submitted, that a certain degree of publi-
city is postulated ; in a greater degree than would be requisite
to establish mere actual publication for example in a libel action.
In the second place in considering the nature and degree of
publication required in Patent Law to create want of novelty, and
in considering for purposes of comparison the possible differences
between such publication and the nature and degree of the publica-
tion necessary in matters of libel, a second point of interest arises,
on which also divergent views appear to have been taken in the
English decisions. Does the publication required in Patent Law
postulate or necessarily entail or depend upon any actual publica-
tion in the libel sense at all ? Or can there be a dedication to the
public so as to amount to an anticipation before there is, or without
there being, any actual publication in the libel sense at all ?
To take a specific illustration : it is generally assumed in the
Courts in England that if it is shown that a volume (it may be
printed abroad and therefore not previously published in England
to anyone) containing a description of a particular invention has
been placed in the public room of the British Patent Office, this
will amount to enough publication to be anticipation.
But does this view depend on the reasoning that the mere fact
of so placing a volume in the Patent Office Library is a dedication
to the public : a ‘publication” in itself in the Patent sense ? Or
does it depend on the reasoning that when a volume is so placed
in the public room of the Patent Office there arises at once a
strong presumption (as a rule of evidence or inference of fact
merely) that people will have read it and that accordingly there
must be presumed to have been actual publication ?
It will be seen that on the former line of reasoning it will be
immaterial if a party proves that in fact no one has read the volume
26
202
THE LAW OF PATENTS IN INDIA
[Ch. VI
in question : there will be public knowledge and anticipation for
all that. On the latter line of reasoning the presumption may be
displaced by positive proof of non-publication : as would be the
case if it were shown that all the pages were uncut or in cases
where a list of persons taking out books was kept, if it were posi-
tively shown that no one had taken out the books.
For an instance, where the former line of reasoning was
enunciated by one of the learned Judges of the Appeal Court, see
the judgment of Lopes L. J. in Harris v. RolhweW 2 in which the
learned Judge expressly observed as follows : — “Jn my opinion the
depositing the specifications in the library of the Patent Office in
the way described was itself a publication of the invention con-
tained in them, and I think that the invention was then dedicated
to and became the property of the public.”
As an instance where the other view was forcibly expressed,
the observations of Jessel M. R. in the case of Plimpton v. Mal-
colmson 83 may be cited, which were as follows : —
“Now, there is no law on the subject except this, that the
Judge, on the facts proved, has to come to a certain conclusion.
If it were necessary to express an opinion upon that, I should say
it must depend on circumstances. It by no means follows, because
the book has been printed and published, and sent to a bookseller
for sale, that it is part of the public knowledge. Suppose it were
proved that the bookseller never did sell any, or attempted to sell
any. He says "exposed for sale”. Suppose the bookseller had put
one volume in his shop-window as exposed for sale for one day, and
the next day, by direction of the author, destroyed all the volumes,
that would not do, and I do not think that Lord Romilly intended
that it would. These arc general observations, not to be read in
that strict literal sense, but in this sense ; that, if a man publishes
a book, that is a large number of copies, and sends them to book-
sellers for sale, and they are, for a reasonable time, exposed in the
window, so that you may infer the people have known and seen
them, and may reasonably so infer, though you did not prove one
has been sold — if the other side cannot prove that one has not been
sold, you may reasonably infer that some of those books have been
sold. If he means anything more than that, I humbly dissent from
(1886) 35. Ch. D. 416 at p. 433.
1876 3. Oh. D. 531 at p. 562.
Ch. VI] PRESUMPTION OF PUBLICATION 203
it ; and I say that my decision is supported by the previous deci-
sions to which I have referred, because I am clear that* if it were
shewn that no copy had ever got into the hand of the public, and
the public knew no more about it than seeing the back of the book
in the bookseller’s window, and every copy could be accounted for,
and that none had been sold though exposed for sale, that would
not be a sufficient publication to avoid a subsequent patent.”
Observations such as those of Lopes L. J. in Harris v. Roth-
well (above) would seem to suggest that the previous Specification
has become “public knowledge” as soon as it was deposited in the
Patent Office Library : by being dedicated to the public and by
affording the public a ready means of acquiring the requisite know-
ledge at their desire. In that view what happened to the Specifica-
tion after its deposit would be immaterial. Actual publication in
the libel sense would be immaterial. Equally actual non-publication
in the libel sense would be immaterial.
Observations on the other hand such as those of Jessel M. R.
would clearly suggest that actual publication in the same sense as
in libel must be established. It is submitted that the better view is
that enunciated by Jessel M. R. In this view actual publication is
postulated ; though it may be presumed to exist in circumstances
in which for example publication in a libel action might not be held
to have been established.
As to the proof of “publication” : evidence.
The other question, whether in any given case the Court will
be satisfied that publication so as to create public knowledge has
in fact existed or has not existed, may involve then and depend upon
a rule of evidence.
Take again the illustration of the case where there has been a
deposit of a Specification at the Patent Office and nothing more.
On the view of Lopes L. J. that deposit without more would •
amount to a dedication to the public of the invention described in
the Specification : proof of non-publication in the libel sense would
not affect the position : to show that it in fact had not been read
by any person would be immaterial. There having been final proof
of public knowledge, no question of any presumption either rebut-
table or irrebuttable arises.
THE LAW OF PATENTS IN INDIA
[Ch. VI
204
On the view, on the other hand, of Jessel M. R. the fact of the
deposit at the Patent Office would raise a presumption (but no more)
of publication, in circumstances in which if the presumption were
not rebutted it should be held that there was public knowledge and
all the consequences of want of novelty following from it. But this
finding would be due to a rule of evidence only. On thi9 view the
presumption arising would be a rebuttable presumption. And if it
could be shown that in spite of the deposit, no one in fact had read
the Specification in question, then there would be held to be no
publication, no public knowledge of the document relied on as being
the anticipation, and consequently no want of novelty in regard to
the latter Patent.
The doubt raised in the English cases would be dissolved by
a direct decision of the previous question : whether actual publica-
tion of the document relied on as an anticipation is postulated.
It is submitted, though the matter is not free from doubt, that
actual public knowledge is required to exist in order that there may
be said to be any want of novelty : that for the public to have had
available to it the means of public knowledge is not enough to create
want of novelty : that therefore some actual publication (whether
shown positively or presumed) is a necessary ingredient in public
knowledge : and that therefore if it is shown in any particular case
that there has been no publication (in India) to a single person then
there is no documentary anticipation, no public knowledge, and no
consequential want of novelty. It is submitted accordingly that the
presumption of publication in such a case as that mentioned (whe-
ther of fact or law) is rebuttable.
Anticipation by oral publication.
The principles of reasoning concerning the degree of publicity
postulated in the publication of any oral communication which is
relied upon as an anticipation, are the same, it is submitted, mutatis
mutandis, as those discussed above in regard to documentary anti-
cipation.
The broad test, it is submitted, will be : was a description of
the alleged invention published orally in such circumstances and
with such a degree of publicity as to make it public knowledge ?
Ch. VI] CONFIDENTIAL COMMUNICATIONS 205
Confidential communications.
If it is shown that the communication alleged to have been
published was made (whether in writing or orally) in confidence and
under a condition of its being kept secret by the person to whom
it was communicated, there will ordinarily be held to be no publica-
tion and no public knowledge ; and consequently a subsequent appli-
cation for a Patent will not be affected by any want of novelty.
It will be often a question of fact, about which there may be some
doubt, whether a given communication was in fact made confiden-
tially. It would seem that even where the communication was not
expressly made on a condition of confidence, the relation of confi-
dence may in certain circumstances be inferred from the position
of the persons making and receiving the communication 64 .
Anticipations actually resulting in India through being made
available to the public at the Indian Patent Office.
It is to be noted that the Indian Patent Office receives regularly
the following documents and periodicals from the Patent Offices
of the following countries : —
N.B. What is spoken of throughout this work as the Indian
Patent Office is the Patent Office for British India situated at No. 1
Council House Street in Calcutta ** The term “ Indian Patent Office’*
is strictly speaking a misnomer as it has no concern ivith the inde *
pendent Indian States , some of which have Patent systems of their
own , It will however he continued to he used throughout this work
for brevity : and because it is the name now in ordinary use.
(а) From the United Kingdom : —
(i) All the publications of the United Kingdom Patent
Office : including all printed Specifications in full.
(б) From other British Dominions and Colonies : —
(i) From Australia ; the Journals issued by the Australian
Patent Office. These only contain numerical refer-
ences by a name index and by a subject matter index
rt4 See Fletcher Moulton p. 66 citing Hurrvpherson v. Syer (188?) 4. R.P.C.
407 at p. 414 (O.A.) ; Pilkington v. Yeakley Vaccuam Hammer Co. (1901) 18. R.P.C.
459 ; and Patterson v. Gas Light dh Coke Co. (1878) 3 A.C. 239. See also G. and J •
Weir Ltd's Application (1926) 43. R. P. C. 39.
e A See page 64 ante.
206 THE LAW OF PATENTS IN INDIA [Ch. VI
to Australian Patents ; they do not contain any full
Australian Specifications or any Abridgements of
Specifications.
(ii) From Ceylon : The Annual Reports of the Patent
Office of Ceylon. These similarly do not contain any
full Ceylonese Specifications or even any Abridge-
ments.
(iii) From New Zealand : from time to time but not
regularly : The Annual Reports of the New Zealand
Patent Office. These similarly do not contain any
full New Zealand Specifications or even any Abridge-
ments.
(iv) From other British Dominions or Colonies : — Nil.
(c) From Indian States : — Nil.
A 7 .J3. There are issued in certain of the Indian States at various
times certain publications : e.g. Gwalior ; Hyderabad Deccan ; Indore ;
Kashmir ; Marwar ; Mysore ; and Travancore. Such publications
do not contain more than the date , name, title or number of any
applications for Patents made in the respective Indian State. They
do not contain any full Specifications or even any Abridgements.
Such publications are not received by , and are not available at, the
Indian Patent Office.
(d) From the United States of America : —
The Indian Patent Office receives regularly the Weekly
Gazettes issued by the U. S. Patent Office. Such Weekly Gazettes,
while they do not contain any full American Specifications, contain
Abridgements of Specifications relative to all Patents granted by
the American Patent Office.
N. 13. Such an American Abridgement is precisely similar to
the document of that description referred to in Plimpton v. Malcolm -
son,™ It consists of a sample drawing and a copy of the first claim
{which is usually the broadest claim), of the relative American
Specification. Just as it was held in Plimpton v. Malcolmson that
the American Abridgement in that case did not amount to an anti-
cipation for the reason that sufficient details were not given in it to
enable a person seeing it to make the invention m question ; so in
(1876) 3 Ch. D. 531.
Ch. VI] DOCUMENTS AT THE PATENT OFFICE 207
many,- probably most cases, it will probably happen that a holder of
an Indian Patent may not be affected by an American Abridgement,
even in a case where if the full American Specification had been filed
and made available to the public at the Indian Patent Office this
would have amounted to an anticipation. The reason for his not
being affected will be in such a case merely the incompleteness of the
abridgement. In other cases where a sufficiently clear description
of the invention is to be gathered from the Abridgement alone, as
particularly in the more simple inventions, such an Abridgement
will stand on the same footing for being a potential anticipation as
the full Specification itself.
As it may be a matter of considerable importance, in coming
to a conclusion whether any particular document is an anticipation
or not in any particular case, to know how it has been dealt with
in order to ascertain whether it has been published or given any
publicity so as to have become public knowledge in India — it
becomes of interest to note how certain of the documents mentioned
above are in practice dealt with after their deposit in the Indian
Patent Office.
It is not necessary to refer further to the documents or periodi-
cals received from countries other than the United Kingdom and
the United States of America, since their very nature precludes
them in any case from amounting to any documentary anticipation
of any subsequent Indian Patent or Application for Patent. It
remains to consider what happens to documents and periodicals
received in the Indian Patent Office from the United Kingdom and
the United States of America.
Under the present practice adopted at the Indian Patent
Office one copy only is kept at the Indian Patent Office of every
British Specification issued by the Patent Office of the United
Kingdom. The files of these British Specifications from the time
of their receipt are kept in an inner room at the Indian Patent
Office, not the public reading room : and any particular British
Specification is only available to a member of the public if requisi-
tioned for by such person by its number. There are no copies of
any British Specifications (apart from certain old Abridgements to
which reference is made hereafter) kept in the Public Beading Room
of the Indian Patent Office. It is true that the member of the
206
THE LAW OF PATENTS IN INDIA
[Ch. VI
public requiring to see one or more British Specifications may make
a search either in a Subject-Matter-Index or in a Name-Index (both
of which indexes refer only to the number of any British Specifica-
tion) and thus find out the numbers of certain British Specifications
related to some particular subject-matter or to some particular
inventor’s name, but except for this he has nothing to guide him
in fixing on any particular number. Possibly by requisitioning for
all the numbers between two figures separated by an interval of, say,
one hundred numbers, he might succeed in obtaining inspection of
the last hundred British Specifications issued. To do this, even,
he must find the number of the most recent British Specification
as a guide. And when it is recollected that over 87,000 applications
for Patents arc received by the British Patent Office in a year
(37,409 being the figure for 1934) and that over 16,000 new Patents,
each with its Specification, are sealed by the British Patent Office
in a year (16,890 being the figure for 1934) 87 and that many more
Specifications are issued than the bare numbers of Patents that
come to be granted, it is seen that the task of inspecting these by
requisitioning them by number is by no means a simple matter. In
these circumstances the question arises whether the filing of British
Specifications in this manner at the Indian Patent Office in truth
amounts to making such British Specifications public knowledge
in India or not.
V
The position in regard to the American Abridgements which
appear in the U. S. Weekly Gazette is the same as for the British
Specifications already described ; except that the current copy out
of the American Abridgements is placed in the public room after
receipt for the space of one week or slightly more.
N. B. There are certain old issues of British Abridgements
(i.e. for years prior to the year 1929 or thereabouts) which are
stored in unlocked book-cases in the Public Reading Room. These are
apparently available for the perusal of any member of the public
without formality and ivithout being requisitioned by number. It
would appear that these certainly would (in the absence of positive
proof of non-publication in any particular instance) be held to have
been made available to the public so as to be public knowledge in
*’ See the 52nd Report of the Comptroller General of Patents, Designs and
Trade Marks for 1934.
Ch. VI.]
WHETHER PUBLIC KNOWLEDGE
209
British India : though in view of the antiquity of these Abridgements
the question of an anticipation of a current Indian Patent by one
of these British Abridgements may be expected but seldom to arise.
Indian Specifications, that is to say Specifications relating to
Indian Letters Patent which have been granted in British India,
are stored and issued differently to the British Specifications and
American Abridgements to which reference has been made above.
In the case of Indian Specifications printed copies of these arc
placed in open shelves in the Public Reading Room of the Indian
Patent Office as soon as they are printed. The printed copies are
bound up into volumes which are also stored in the same way in
the Public Reading Room. These bound volumes as well as the
loose printed copies of the current unbound volumes are available
for inspection and perusal by any member of the public at his
pleasure without any formality . 08
It takes ordinarily about five weeks for Indian Specifications to
be printed after the date of the acceptance of a particular application
for Patent. Typed copies of such unprinted Specifications are kept
with the Superintendent though not placed in the Public Reading
Room. Such typed copies may be obtained on requisition (by number)
to the Superintendent.
It is of interest to note that in England all printed Specifica-
tions in the Patent Office, whether of the United Kingdom or of
other countries, are stored on open shelves in the public Patent
Office Library ; and may be inspected and perused by any member
of the public at his pleasure without any formality.
In the circumstances noted, it is clear, it is submitted, that just
as in England a previous British Specification is held to be an
anticipation (by reason of its having become public knowledge), so
a previous Indian Specification will be an anticipation in British
India by reason of its having become public knowledge. This is
obviously right and proper from every poiut of view.
08 A further factor which may have a bearing, perhaps slight, but perhaps
cumulative on the question of publicity is the difference in the hours at which
documents are available. In the U. K. Patent Office between 9-30 a.m. and
9-30 p.m. : in India between 11 a. m. and 4 p.m. which means that perusal of
documents becomes more difficult for those persons whose time in office hours is
not their own.
27
210 THE LAW OF PATENTS IN INDIA [Ch. VI.
As to whether or not in India under the system above noted
a British Specification or an American Abridgement stored at the
Indian Patent Office should or should not be held to have been
sufficiently published by reason of such storage so as to have become
public knowledge in British* India, sufficiently to amount to an
anticipation of a later Indian Patent or Application for Patent is,
it is submitted, a different matter. On the whole, it is submitted,
the true legal position would seem to be that in reality and in law
there is no sufficient publication by storage in the Indian Patent
Office, in the conditions noted, such as to constitute any public
knowledge in India of the contents of these British Specifications
or American Abridgements. The backward state of industrial
development at large in British India in comparison with England
in regard to Patents may also be taken into account as supporting
this conclusion. No doubt in England all foreign specifications are
avidly read by persons interested in a particular sphere of industrial
activity in which inventions are important and no doubt the
knowledge contained in the foreign specifications filed at the British
Patent Office is in fact as well as on paper “public knowledge”
in the United Kingdom in a very short space of time after the
specifications are filed at the British Patent Office. In India, as is well
known, the position is very different and in the ordinary way no one
will read the patent specifications which are received (in their
thousands) by the Patent Office from abroad. Apart from this there
is the most important difference due to the different methods of
storage and treatment between the Patent Offices of India and the
United Kingdom which has been already explained, which, it is
submitted, results in a very material difference in the degree in
which the specifications from abroad are in each respective country
available to the public.
It may well be having regard to these circumstances, that when
the question comes to be directly decided, a Court in India may hold
that the mere existence of a British Specification in the Patent
Office in Calcutta and nothing more does not amount in India to a
publication (so as to constitute public knowledge in India) at all.
It is submitted that such a decision would in law be correct in
British India under present conditions ; just as it was decided in
England in the case of Otto v. Steel™ in effect, that the mere exis-
(1885) 31. Ch. D, 241.
Ch. VI.] BRITISH AND AMERICAN SPECIFICATIONS 211
tence of a book in the British Museum did not constitute public
knowledge in England.
In an unreported case in the Calcutta High Court, 70 National
Carbon Co. Inc. v. Brough <& Co. Ltd. and Anr , Buckland J. expressly
held that American Abridgements were not public knowledge and
were no anticipation. The material passage of the Judgment is as
follows : — “The only other point with which I need deal is as to the
alleged prior publication by a Specification known as Briggs, of
which a copy of an abridgement appearing in the Official Gazette
of the United States Patent Office was received at the Patent Office
in Calcutta in January 1928. I should have been disposed to hold
that had this been published to the world it anticipated the plaintiff
Company’s invention, but in my opinion there was no publication
upon which the defendent Company can rely. The Official Gazette
of the United States Patent Office is not open to the public in that
any one can pick it up and consult it as in the case of other publica-
tions. It is kept in a separate room known as the Record room,
though any one can see it on requisiton. This might suffice if the
public knew the publication was available but a person would only
ask for it if he knew such a publication existed and might be seen in
the Patent Office. It was only quite recently that attention was
drawn to the fact that this publication may be consulted by a para-
graph in the Patent Office hand-book. Had that paragraph appeared
in earlier editions of the hand-book it might be said that the atten-
tion of a careful searcher was drawn to this publication, but as it
is I do not think it can properly be said that the abridgement of
Briggs’ specification was available to the public at any time prior to
the issue of Letters Patent to the plaintiff Company.”
It is to be noted that according to the practice then subsisting,
there was no reference in the Patent Office Hand-book to the existence
at the Indian Patent Office of those American Abridgements. Buck-
land J. appears to rely among other facts partially on that fact. It
is open to doubt what his decision would have been concerning more-
recent times since when the existence of the Abridgements has been
mentioned in the Patent Office Hand-book.
In regard to British Specifications the fact that these were
treated so as to receive only the same or less publicity than American
■>° Suit No. 2882 of 1931.
212
THE LAW OP PATENTS IN INDIA
[Ch. VI.
Abridgements, apart from the question of a mention in the Patent
Office Hand-book, does not appear to have been appreciated by the
Court. To arrive at his Judgment on the main issue in the case (that
the plaintiff Coy.’s Patent had been anticipated by the publication
of a British Specification at the Indian Patent Office) is necessarily
to assume that such a British Specification was public knowledge in
India. But in that case Buckland J. did not expressly deal with the
position as to British Specifications and made no direct observations
as to them. 71
Until the point is decided definitely one way or the other in an
Indian Court it will remain a question of considerable doubt what
is the true position in law in India.
Whatever may eventually be held to be the correct view in law,
the current daily practice of the Patent Office in India in the mean-
time is based on an adoption of the view (contrary to that advocated
above) that the position in India is the same as in England. On an
analogy with the current practice of the English Patent Office, the
Indian Patent Office in the conduct of its examinations before
acceptance, in all opposition proceedings before the Controller, in
fact in all its transactions, always acts on the view that any suffi-
cient prior disclosure of an alleged invention in any prior British
Specification is an anticipation : and for this purpose acts on the
assumption that such prior British Specification has in every case
become public knowledge in British India through its storage at the
Indian Patent Office.
It is difficult to reconcile the view at present adopted by the
Indian Patent Office (in their treatment of British Specifications as
public knowledge and anticipations) with the full force of the
observations of the Calcutta High Court (Buckland J.), having
7 1 The unreported case cited was a suit for infringement of a Patent. In
the Court of first instance the Judgment of Buckland J. was in favour of the
Defendants: the suit being dismissed with costs. The Plaintiff Company appealed.
During the hearing of the Appeal and before the conclusion of argument one of
the learned Judges of the Appeal Court fell ill. Thereafter the Appeal was sett-
led : the terms of settlement (put into Court) being on the baBis inter alia that
the Judgment of Buckland J. was set aside. It remains a matter of conjecture
what the decision of the Appeal Court would have been on the particular point
now under discussion.
Ch. VI.]
NOT ANTICIPATIONS
213
regard to the conditions actually existing as to the treatment of
British Specifications after their reoeipt at the Patent Office.
It is submitted in view of the foregoing considerations there-
fore that these British Specifications thus stored at the Indian Patent
Office do not in truth amount in Patent Law even to paper anticipa-
tions : and do not in truth create any want of novelty. Even if it
were to be considered that they did amount to anticipations, it cer-
tainly cannot be suggested that they amount to any public knowledge
in a real sense or to anything more than paper anticipations of the
flimsiest and most technical character. It is difficult to see what
manner of advantage or benefit is gained by the continuance of the
present system for enforcing such mere paper anticipations as might
be thus supposed to be comprised in British Specifications, as an
effective bar to subsequent genuine Indian Patents.
Should it be desired to make certain that inventors and pros-
pective patentees in India should be unhampered by the dead mass
of the contents of non-Indian specifications buried only at the Indian
Patent Office, the desired result could very easily be achieved : either
by the issue of executive directions only or by legislation or both. 12
Degree of similarity :
In all the oases contemplated, where there has been a communica-
tion which is alleged to amount to a previous disclosure of the
alleged invention so as to constitute want of novelty, no matter
whether such communication has been documentary or oral or
through user, the question will arise whether the thing disclosed was
so similar to (or identical with) the alleged invention as to amount
to an anticipation of it. If there is not identity, or at least a great
enough degree of similarity, obviously there can be no anticipation
in any ciroumstanoes.
A comparison between the nature and limits of the alleged inven-
’* It appears that British specifications hare also been stored in Bombay, at
the Record office : copies of specifications issued for the years from 1670 to 1931,
bound in volumes of 100 copies : but that they have been discontinued since 1932.
And British Abridgements from the year 1861 up to date. It is submitted
that the Btorage in the Record office having regard to its method and to all
circumstances does not amount to public knowledge in fact in India. Bo far as
has been able to be ascertained British specifications are not kept in any other
public institute in India.
214
THE LAW OF PATENTS IN INDIA
[Cfc. VI.
tion has therefore to be made with the nature and limits of what was
previously published. This comparison is not infrequently the crux
of the whole question whether or not there has been anticipation so
as to create want of novelty ; and in the process of making the com-
parison, difficult and fine questions of construction may arise.
In considering any document which is alleged to amount to an
anticipation it is necessary to construe any ambiguous or doubtful
passages or expressions in the light only of the existing knowledge
in the art at the time the document was written : that is to say the
existing common knowledge at that time. In considering the mean-
ing of an oral communication, similarly, it is submitted, only that
meaning will be attached to the communication which is within the
limits of the existing common knowledge at the time it was made.
And in considering the implication of a prior user, it is similarly
submitted that a communication will be understood to have occurred
only of so much as a person seeing the user would be expected to
understand having regard to the existing common knowledge of the
time when he saw the thing used.
A similar question arises in regard to the making and construc-
tion of the specification relating to the Patent which is said to be
anticipated. In that case also any ambiguous or doubtful passages
or expressions are to be read in the light of the existing common
knowledge in the art at the time when the grant to which the speci-
fication relates was made.
The question however remains : what standard of what person’s
knowledge is to be deemed to be treated as the background or basis
of any such process of construction ?
As to this process of construction (which is preliminary to any
process of comparison) certain definite principles have been evolved
in the decided cases. Broadly speaking, it may be sufficient for
present purposes to state that the standard of knowledge by which
the document is to be taken is the common knowledge of a craftsman
competent in the art, reading the document at the time when it was
made ; or, in the caso of a Patent Specification, then reading it at the
date of the grant of the Patent to which it relates . 73
78 See Fletcher Moulton (1913 Edn) p. 57, p. 123 and pages 132 and 133 and
generally Fletcher Moulton Chapter VIII.
Ck.VI] AT WHAT STAGES OBJECTIONS MAY BE RAISED 215
Provisos as to anticipation :
Certain express provisos contained in the Indian Patents and
Designs Act 1911 which prevent certain cases of an exceptional
character being treated as cases of want of novelty may here be
noted. They are embodied in Section 13 (1) and Sections 38 and 40
and Section 78A.
Sections of a somewhat corresponding nature in the English Act
of 1932 are Section 15 (1) and Sections 41, 45 and 91.
Want of novelty : how far a question of fact or law :
Whether an alleged invention is new will depend on the different
facts of every case. In the main it is a question of fact. 74
But it is submitted that a subsidiary question whether any parti-
cular alleged communication or alleged publication did or did not
amount to common knowledge or to public knowledge, as the case
may be, or subsidiary questions either of the construction of the
specification of the Patent alleged to have been anticipated or of the
construction of the document or specification which is said to
amount to the anticipation may be in themselves, or entail, questions
which arc in truth questions of law.
At what stages objections for want of novelty may be raised in
British India :
(i) Before acceptance of the application : —
It is generally assumed that Section 5 (1) (e) entitles the Patent
Office to raise objections as to want of novelty and not merely as to
subject matter. While the wording of Section 5 (1) (e) on this
assumption would allow the Patent Office to raise objections on all
the grounds of prior user, prior oral publication, and prior documen-
tary publication in any documents or periodicals or scientific
treatises, in addition to prior documentary publication in British
Specifications and in American Abridgements (deposited at the-
Patent Office) and in addition to prior documentary publication in
Indian Specifications ; yet in actual practice the search of the Indian
Patent Office at this stage does not ordinarily go outside the field of
Indian Patent Specifications, and does not usually cover British
74 Pickard v. Prescott (1892) 9. R. P. C. 195 H. L. at p. 200.;
216 THE LAW OF PATENTS IN INDIA [Ch.Vl.
Specifications (or very seldom), and rarely covers publications other
than Specifications.
When it is observed that the wording of 5 (1) (e) is restricted
to the point whether “the invention as described and claimed is
prima fade not a new manufacture or improvement” it would seem
doubtful how a search concerning a want of novelty apart from
what appears on the face of the Specification — that is to say a search
into other documents for an investigation for documentary anticipa-
tion — is at all covered by the wording of 5 (1) (e) or properly speak-
ing authorised or justified thereunder.
N.B. The more predse wording of Sections 3, 6 ( which concerns
chiefly an examination only for comparison between the complete
and the provisional specification), and 7 of the English Act may be
contrasted with the wording of the provisions of Section 5 of the
Indian Act.
(ii) In opposition proceedings before the Controller : —
Under Section 9 (d) of the Indian Act, want of novelty in any
form, whether by anticipation by publication by prior user, or by
oral publication, or by documentary publication, may be raised by
the opposer as an objection to the grant.
Section 9 (d) in this respect differs very materially from
the corresponding English Section 11. It will be seen that in
England under that section prior user is not available as a ground :
nor is the ground of oral anticipation but only documentary anti-
cipation within the limits there stated.
Section 9 (b) in so far as it may be treated as relating
to want of novelty and not to prior grant (which it also covers) does
not actually add to or affect the grounds stated in Section 9 (d). It
may however be treated as covering by express reference a ground
of want of novelty for documentary anticipation in a prior Indian
Specification ; which ground is already covered, generally, by
Section 9 (d).
(iii) On a Petition to Court for revocation : —
The term “new invention” used in Section 26 (1) (b) will, it is
submitted, cover objections for want of novelty as well as objections
in certain respects for want of subject matter.
Every form of want of novelty, whether for anticipation in
Ch. VL]
FREEDOM FROM PRIOR GRANT
217
India by prior user, or by oral publication, or by documentary
publication in any documents (whether Indian Specifications, British
Specifications, Foreign Specifications or Abridgements or periodicals
or treatises or books or correspondence) may be raised as a ground
for revocation under Section 26 (1) (b).
N.B. The wording of Section 26 (1) (b) is not altogether happy
in contrast to the more explicit wording of Section 25 of the English
Act ; in which. Section 25 (e) is made clearly to refer to want of
novelty, while other sub-sections by their separate inclusion are made
by contradistinction to refer to various aspects of subject matter.
(iv) In an infringement suit as a defence : —
The position is the same as for a Petition to Court for revoca-
tion : by virtue of Section 29 (2).
B. FREEDOM FROM ANY PRIOR GRANT
Prior grant a ground for invalidity :
It is clear that the Crown cannot purport to make the same grant
for the same monopoly to two different persons on different occas-
ions: it cannot issue a second grant in derogation of a former grant.
Therefore a Patent for an alleged invention for which a prior grant
by a previous Patent has been made is clearly invalid on fundamen-
tal principles of the Common Law. Under the English Act of
1907-1932 the possibility of a bar by prior grant is expressly made
the subject matter of a search by the Patent Office under Section 8.
It is also expressly provided for as being a possible ground of objec-
tion in opposition proceedings under Section 11 (1) (bb). Under
the English Act of 1907-1932 such an objection for prior grant
is also expressly made a ground on which the revocation of a-
patent may be obtained under Section 25 (2) (a) : viz : “that the
invention was the subject of a valid prior grant”. The same ground
is also made available in England as a defence to an action for
infringement by virtue of Section 25 (3) of the English Act. The
corresponding section in the Indian Act of 1911 ( see Section 26 )
contains no such express provision. Such an objection to the
28
218
THE LAW OF PATENTS IN INDIA
[Ch. VI.
validity of a Patent must be none the less a good objection in India
as in England on general principles. 75
In India moreover an objection based on prior grant may be
understood to be provided for as a ground for opposition under
9 (1) (b) ; though the wording makes no reference to the existence
of any Patent or to the necessity of any grant being actually made.
It will be observed that the wording of 9(l)(b) is confined to what
has been claimed : while that of 9 11) (d) may extend to the whole of
the contents of a prior specification. In an opposition under (9) (b)
therefore it should be shown that the anticipation was contained in
the claims alone of a specification which is relied on as being a prior
grant without looking elsewhere in that Specification.
Where objection is taken to the validity of a Patent on the
ground that the alleged invention described in it has been contained
in a Specification of a previous Patent, and where that previous
Specification has been published, the objection may be treated as an
objection for want of novelty on the lines already fully discussed
earlier in this chapter. It is where the previous specification has not
been published prior to the grant of the subsequent Patent and yet
the application for the previous Patent has or will have precedence
over the application for the subsequent Patent, that there is no want
of novelty properly speaking and yet there is room for an objection
on the ground of “a prior grant”.
It should be noted that the prior grant may be contained either
in an Indian Specification pertaining to a Patent granted on an
original Indian application or in an Indian Specification pertaining
to a Patent granted on an Indian application which has been filed
under the reciprocal arrangements. In the one case the grant in
question dates from the filing of the original application : in the
other the grant is antedated to the date of the corresponding United
Kingdom or foreign Patent, which may mean that the grant is dated
with a date which may be anything up to a whole year previous to
the date when the Indian application is actually made. Accordingly
7B . See Fletcher Moulton p. 76 citing Crane v. Price (1842) W. P. C. 412 ;
Also Terrell p. 106 ; Ex parte Bailey (1872) 8. Ch. App Cab 60 at p. 63 ; Pugh
v. Riley Cycle Co. Ltd. (1913) 30. R. P. C. 32 at p. 43 (1913) 30 R. P. C. 514 (O. A.)
at p. 529 ; Rowland & Kennedy v. The Air Council ( 1925 ) 42. R. P. C. 433.
Cb. VL1
IN RECIPROCITY OASES
219
in cases where the prior grant is comprised in a Specification filed
under the reciprocal arrangements the position is that such grant is
actually not in existence at the time when the application to be
objected to is filed. There is in such case no Indian Specification in
existence which may be looked at as delimiting the prior grant.
In the United Kingdom this situation is met by a search being
provided for to be made by the Comptroller at a date 12 months
after the application : this search is regulated by Section 8 of the
English Act.
In India there is no provision for any search being made by
the Controller in regard to the possibility of an application for a
Patent being barred by prior grant : either in cases where the bur
would be contained in an Indian Specification pertaining to an
original Indian application — when the Indian Specification compri-
sing the prior grant would be in existence at flie Indian Patent
Office at the time of the application to be objected to — or in the other
cases where the Indian Specification containing the prior grant may
not come into existence until a date which may be at any date up to
one year afterwards.
The result is that the Indian Patent office is not authorised
under the Indian Act to afford to an applicant for an Indian Patent
any assistance under the present system in the way of information
as to the likelihood or otherwise of his application being fouud to be
barred by reason of a prior grant. The applicant must as to this
risk, rely on his own enquiries.
The question of the possibility of any objection on the ground
of what is commonly referred to as “prior grant”, while it raises a
question of novelty in a sense, that is to say whether the new grant
if made will be new in the sense of being free from any prior grant,
is totally distinct from the other considerations of novelty which
have been discussed hitherto in this chapter. An objection to the
validity of a patent on a ground of prior grant, such prior grant
never having become public knowledge, is not properly speaking an'
objeotion on the ground of “want of novelty” in the sense in which
that phrase is used in Patent Law < and is therefore to be treated as
being a totally distinct objection.
It may be that the circumstanoes whioh afford grounds for an
objection of prior grant will also afford grounds for an objeotion
220
THE LAW OF PATENTS IN INDIA
[Ch. VI.
that the Patentee or Applicant for Patent was not the true and first
inventor.
PART IV. UTILITY.
Utility.
It is true that the Statute of Monopolies does not use any
words expressly referring to the necessity of utility in an invention
to be patented. Nevertheless the Courts have long since held that
patents which are not useful are invalid. Such decisions are quite
independent of any express provisions regarding utility in modern
legislation : and are based presumably both, on the original prin-
ciples of the Common Law and on the general scheme and intention
of the Statute of Monopolies : which was to sanction only such
monopolies as were for the good of the public and of the realm.
The decisions appear mostly to have gone on this general ground,
that a patent should not be granted for a thing which was adjudged
prejudicial to the public ; and if granted should accordingly be held
invalid. 1 Certain of the decisions have also gone on the other
ground of misrepresentation : that is to say that the patentee has
deceived the Crown in representing that his patent has advantages
which it has not. 2 In the result the law has been absolutely clear
that besides those attributes in connection with its subject matter
which have been already discussed and besides the attribute of
novelty, it is an essential attribute of a good patent that the inven-
tion to which it relates should be useful ; and that want of utility
is a ground of invalidity.
Useful : formerly meant “not prejudicial to the public.”
The proper plea used formerly was that the patent was “pre-
judicial”. Recently in patent phraseology that expression is not
much used, having been replaced by the use of the terms “want of
utility” or "not useful”. The latter term, it is submitted, is how-
1 See Jupe v. Pratt (1837) W. P. C. 145, 151 ; Elias y. Orovesend Tinplate
Go. (1898) 7. R.P.C. 455, at p. 467 ; Ward Brothers v. Hill (1903) 2a R.P.O. 189,
at p. 200 : Wilson Brothers Bobbin Co. Ltd. y. Wilson & Co. ( Barnsley ) Ltd. (1903)
20. R.P.0. 1, at p. 16.
* See Price y. York Street Flex Spinning Co. (1893) 10 R.P.C. 34, at p. 39 :
and Morgan y. Seaward (1837) W.P.O. 187.
Ch. VL]
UTILITY
221
ever employed, when this question arises at all, in the same sense
as the old term “prejudicial" in that it must mean “useful to the
public" and not “useful to the patentee".
Useful : modern special sense.
The term “utility" has now come to be employed with regard
to Patents in a very special sense. The word utility might almost
be substituted by the term “efficiency" or “workability". The
question is whether the invention will work ; and will do what is
claimed for it . 3 And if the invention is useful, or efficient, in
that respect, it is immaterial whether it is or is not itself practi-
cally useful in a high degree . 4 It is immaterial whether the final
product is or is not useful, provided the invention itself fulfils the
test of utility in the way of efficiency . 6 It is similarly immaterial
whether or not the final product is of commercial utility . 6 Or
whether the final product is suitable for the purposes suggested . 7
Slight amount of utility.
It is well established that a very slight amount of utility in
the older sense, of being useful to the public, is required in the
invention itself to support a Patent . 8 (There appears to be some
authority even for the proposition that it is immaterial, whether
or not the final product is even at all beneficial to the public ). 9
• See Morgan v. Seaward (1837) W.P.C. 187 : Wilson v. Union Oil Mills
(1892) 9. R.P.C. 57 at p. 70 ; Fawcett v. Homan (1896) 13. R.P.C. 398 at p. 405
(C.A.) : Walseback Incandescent Qas Lighting Go . Ltd . v. New Incandescent ( Sun -
light Patent) Gas Lighting Go. Ltd. (1900) 17. R.P.C. 237, 252.
4 Provided it fulfils the other necessary tests of subject-matter and novelty
also. See also : Philpot v. Banbury (1885) 2. R.P.C. 33 at p. 37.
• See Alsop's Patent (1907) 24. R.P.C. 733 at p. 753. See also Fletcher
Moulton at p. 80.
• United Telephone Go. v. Bassano (1886) 3. R.P.C. 311 at p. 313 : Badische
Anilin and Soda Fabrik v Levinstein (1887) 4. R.P.C. 449 (ILL ) at p. 462 : Ehrlich
v. Ihlee (1888) 5. R.P.C. 437, 449 (C.A.) : Edison & Swan v. Holland (1889) 6.
R.P.C. 243 (C.A.) at p. 283 : Sunlight Incandescent Gas Go. v. Incandescent Gas
Light Co. (1897) 14. R.P.C. 757 at p. 775.
7 See Fletcher Moulton p. 80.
H See Otto v. Linford (1882) 46. L.T. (N.S.) 35, at p. 41 : and the cases cited
above.
• See Fletcher Moulton p. 80. Compare Terrell p. 107 et seq.
222 THE LAW OF PATENTS IN INDIA [Cfc. VI.
Utility a question of fact.
It is purely a question of fact whether any particular invention
has or has not fulfilled the requirement of utility. 10
Test or tests of utility.
Tests then for utility and the requisite degree thereof may be
shortly stated to be one or all of the following : —
(1) Has the invention any use as distinct from design ?
(2) Will the invention work : and do what is claimed for it ?
(3) Will the invention be sufficiently! even though slightly,
useful to the public ?
From what has been already stated it is clear that for a good
patent it is essential that the first and second tests must be com-
plied with : it is submitted, (though from the trend of modern cases
of this there may be said to be some doubt), that the third test is
also to be complied with. In arriving at a decision on the question
of utility, it will be assumed, since the Specification is addressed
to a person competent in the art concerned, that the help of such a
competent person is available to make the invention work.
As the question of utility depends on the particular facts of
each case and a9 a very slight degree of utility is enough to sustain
the validity of a Patent against an objection for want of utility, it
is unnecessary here further to consider particular cases.
A distinction between Patents & Designs :
For an article to be suitable for registration as a design no
utility is required. From the definition of the word “design” in Sec-
tion 2(5) of the Indian Patents & Designs Act it is seen that the
features of an article in themselves having utility cannot be regis-
tered as a design. That definition reads : —
“ “design” means only the features of shape, configuration,
pattern or ornament applied to any article by any industrial process
or means, whether manual, mechanical or chemical, separate, or
combined, which in the finished article appeal to and are judged
solely by the eye ; but does not include any mode or principle of
construction or anything which is in substance a mere mechanical
*° See Hill y. Thompson 1. W.P.C. 235, 237 : Cornish v. Keene 1 W.P.C.
50, 506 : Terrell p. 107.
Ch. VI.] AT WHAT STAGES OBJECTIONS MAY BE RAISED 223
device, and does not include any trade mark as defined in Section
478, or property mark as defined in Section 479, of the Indian Penal
Code*\ In practice when an inventor brings to a Patent Agent an
article for which the inventor desires to obtain a monopoly, it
becomes necessary to decide whether the article should be patented
or registered as a design. The distinction may depend on the
presence or absence of utility in the invented article. It is submitted
therefore that it is convenient in connection with the formulation
of any practical tests or utility in regard to a patentable invention
not to overlook the necessity of an investigation whether the alleged
invention has any use as distinct from design.
Connection between utility and sufficiency :
As has been pointed out, the question of utility is in some
cases hardly distinguishable from the question of insufficiency which
is considered below. 11 But for the purpose of the effective investi-
gation of the question of utility it has been pointed out that to
avoid confusion of thought it should be assumed that the Patent
in question has complied with the requirements of novelty and
sufficiency. 12
At what stages objections for want of utility may be raised in
British India.
As to objections for want of utility : —
(i) Before acceptance of the application for Patent : —
This objection cannot be raised at this stage.
(ii) In opposition proceedings before the Controller : —
This objection cannot be raised at this stage : want of utility
not being among the grounds mentioned in Section 9.
(iii) On a petition to Court for revocation : —
This objection may be raised as a ground under the express
provisions of Section 26(lXe).
(iv) In an infringement suit as a defence : —
The position is the same as for a Petition to Court for revoca-
tion : by virtue of Section 29(2).
11 See Wilson Bros. Bobbin Co. Ltd, Wilson & Co. Ltd. (1903) 20 R.P.O.
1. at p. 14 (H.L.) and Cf. Vidal Dyes Syndicate v. Jjevinstein (1912) 29. R.P.C.
245, at p 254. (C.A.)
See Philpot v. Banbury (1885) 2. R.P JO. S3, at p. 37.
224 THE LAW OF PATENT8 IN INDIA [Ch. VI.
Principles underlying all current Patent Legislation in the Act of
1911.
It should be here emphasised that the principles relating to
Subject Matter, Novelty & Utility which have been discussed in
this chapter are such as spring from the inherent nature of a Patent
and have their source in the Common Law and in the Statute of
Monopolies ; and arise independently of the modern legislation
embodied in the Indian Patents & Designs Act of 1911 ; just as
these same principles arise independently of the modern legislation
embodied in England in the English Patents & Designs Act of
1907-1932. Owing to the peculiar nature of the Statute of Mono-
polies, in that it is merely a declaratory Act in which is set down
the limits of the prerogative powers of the Crown in regard to
monopolies, it might well be contended that no subsequent modern
legislation of the legislature either in Parliament in England or in
the Assembly in India could make any valid Patent Law which
purported to be in derogation of or in disagreement with the provi-
sions of the Statute of Monopolies. It might be argued that any
such purported legislation would be ultra vires and of no effect :
on the ground that the extent of the Crown’s prerogative is not a
matter for legislation. At any rate no such question arises. For
neither the current Statute of 1932 in England nor the current Act
of 1911 in India in any way ruQS counter to any of the broad
principles relating to the validity of Patents to which reference has
been made in this chapter. Both Acts are expressly framed (See
section 79 of the Indian Act of 1911 and Section 97 of the English
Act of 1932) in such a way as in no way to take away, abridge or
prejudicially affect the prerogative of the Crown.
Other requisites tor a good patent.
What has been stated in this chapter will indicate, generally,
what can and what cannot be made the material of a good patent.
There are other limitations of a good patent also to be considered,
which relate not so much to the inherent nature of the material of
the invention ; but to the manner in which the invention is des-
cribed in the Specification, or to the circumstances in which the
application in relation to the invention is made for the grant, or
the manner in which the Patent is managed and worked after grant.
If certain of these requirements are not fulfilled the same result
Ch. VI.]
OTHER REQUISITES
225
will follow : the Patent will not be a good Patent : either it will
not be granted or if granted it may be held to be invalid or be
revoked. These other requirements since they do not refer directly
to the nature of the invention itself, are dealt with in the nest
chapter : they will be there considered under the separate heads of
Insufficiency, True and first Inventor, and Fraud.
29
CHAPTER VII
FURTHER REQUISITES OF A VALID PATENT IN REGARD
TO THE APPLICATION AND SPECIFICATION-
SUFFICIENCY IN THE SPECIFICATION-
PATENTEE MUST BE THE TRUE
AND FIRST INVENTOR-
ABSENCE OF FRAUD
PART I —INSUFFICIENCY
Sufficiency of description of the invention in the Specification.
It is proposed first in this chapter to examine the degree of
sufficiency which is required for a valid patent in respect of the
description of the invention necessary to be contained in the Speci-
fication.
Origin of the requirement.
The specification or description of the invention, to which a
patent relates, was not required originally either by Common Law or
by the Statute of Monopolies. The filing of a Specification has since
been made compulsory by refcrence^thereto in an express condition
or proviso which is contained in the form of the Letters Patent
itself ; the material passage in the Indian form of grant being the
following : —
“And whereas he hath by and in his specification (of which a
printed copy is hereunto annexed) particularly des-
cribed and ascertained the nature of the invention
and the manner in which the same is to be per-
formed"
There appears to be no doubt however that the instruction of
the public so that they might be in a position to pursue the manufac-
ture or exercise of the invention after the patent had expired, has
always been considered part of the motive or policy of the grant of
a Patent. This may be appreciated from an investigation of the
history of the steps which have from time to time been taken to
ensure such a result.
Oh. VII]
INSUFFICIENCY
227
History of previous requirements.
Tho history of the development of the Specification and of the
requirements as to the degree of sufficiency of description to be
embodied therein is traced in some detail in Edmunds on Patents in
Chapter VIII. The following short extract is of interest : —
“The instruction of the public in the manufacture or exercise
of a patented invention has always been considered part of the
motive or policy of the grant, and different means of attaining this
object have been adopted at different stages in the history of patent
law. The earliest practice, and that to which Lord Coke refers, was
to insert in the grant a proviso requiring the inventor and his
assignee to take apprentices during the last seven years of the term,
and to teach them “the knowledge and mystery” of his invention.
There was, however, no obligation upon a patentee to define
clearly the objects to which his patent extended, and the public at
once were exposed to the danger of unconsciously infringing the
privilege, and had no security for acquiring the invention on the
expiration of the patent. The only indications to the public of the
scope of the invention wero the short recitals in the letters patent
themselves.”
Even at that time however it appears to have been the law
that if a patent had contained no such recital, even though there
was at that time no express condition in the grant requiring a speci-
fication or description of the invention, such patent would have
been absolutely void for want of consideration . 1
The next stage of development is described by Edmunds also
in the following passage : —
“The description of inventions, which were formerly contained
in patents were, however, very meagre and unsatisfactory, and the
practioe being found inconvenient, it became the custom, near the
end of the reign of Queen Anne, to insert a proviso into all patents,
obliging the patentee within a given time after the date of his grant,
to “particularly describe and ascertain the nature of his invention,
and in what manner the same is to be performed”, by an instrument
under his hand and seal, called a “specification” and to enrol the
Baid specification in the Court of Chancery. The authority by
1 Bee Edmunds p. 84 citing Hindmarch p. 151.
THE LAW OF PATENTS IN INDIA
[ch. vn
which this clause was introduced does not appear, and was not, at
any rate, parliamentary. It was probably suggested by the Attorney
or Solicitor-General of the day. According to Webster, the earliest
patent containing the proviso for a specification was that granted
3rd October 1711, to John Nasmyth.”
Hence the origin of the present Specification and the present
requirements as to sufficiency of description therein.
Previous objections, on the ground of foreign piracy, to the use of
Specifications with full descriptions of invention.
At various stages of the development of the system of enforc-
ing some sort of detailed Specification, fears were raised that the
use of such specifications were harmful, in that they allowed the
dissemination of full information of British inventions abroad in
foreign states. At one time this difficulty was overcome by Statu-
tory directions to the effect that all specifications should be enclosed
in a cover under the seal of the Lord Chancellor and lodged in the
office of one of the Masters of Chancery to be nominated by the
Lord Chancellor and were to be preserved by that Master. Ela-
borate provisions were made with a view to ensure that the speci-
fications were only removed and opened on certain occasions and
under certain circumstances and conditions ; after which they were
to be sealed up again with the Master and deposited as before. 2
\
Applications used also to be made to dispense with the enrol-
ment of specifications ; for example on the ground that foreigners
would obtain the invention. The risk of foreign piracy was not
unnaturally much agitated.
But in the end the advantages of a system entailing the
compulsory filing of specifications were considered to outweigh
other disadvantages. An extract of a judgment of Lord Eldon in
Exparle Koops 3 refusing an application which was made for enrol-
ment of a specification to be dispensed with, is of interest in this
connection. He said : —
"As to the worth of the apprehension suggested, a man has
nothing more to do than to pirate your invention in a single instance.
* Bee Booth’s Act, 1792, Geo. Ill c. 73.
• 1802, 6 Ves 595.
Ch. VII] IN THREE DIFFERENT SPHERES 229
andhe will then force you to bring an action and then the speci-
fication must be produced. But with regard to the King’s subjects
a very strong objection occurs, which makes it necessary that the
specification should be capable of being produced. They have a
right to apply to the Patent Office to see the specification, that they
may not throw away their time and labour, perhaps at a great
expense, upon an invention upon which the patentee might after-
wards come with his specification, alleging an infringement of his
patent, when, if those persons had seen the specification, they never
would have engaged in their project. Tho enrolment is, therefore,
for the benefit of the public.” 4
The objections against foreign piracy of inventions is under
current legislation to some extent met, in regard to certain special
patents, such in particular as those relating to military or naval
matters, by certain special provisions which allow of specifications
for such inventions not to be made public. Apart from this excep-
tional class of cases, it is now and has been for many years obligatory
on an applicant for patent to comply with requirements demanding
a high degree of sufficiency in his specification in regard to the des-
cription of his invention therein contained.
Sufficiency of description of the invention now demanded by
Section 4 of the Act of 1911.
Certain express directions are now contained in the Indian
Patents and Designs Act of 1911 making it obligatory for an appli-
cant for a Patent to file a Specification ; and also making it obli-
gatory upon him to state certain matters therein. Reference in
particular may be made to Section 4 of tho Act.
General principles evolved from judicial decisions are in practice
required to supplement the provisions of the Act.
Since however the Act is not framed in such detail in this
respect, as to afford by itself a complete view of the nature of what
is in practice found to be required to be stated in the Specification,
it will be convenient here to give certain general explanations ; and
to make certain general observations concerning the Sufficiency of
description, which has in accordance with the principles long since
See Edmunds p. 86.
230 THE LAW OF PATENTS IN INDIA [Ch. VH
laid down in the case law, been required in a Specification for a
valid Patent.
This is an instance where the real effect of current Patent Law
can only be ascertained not from the Act alone but from the Act and
the judicial discussions and decisions read as a supplement to the
Act.
Sufficiency of description is required in three different respects
What is required of the applicant for Patent is, in the current
wording of Section 4 of the Act of 1911, that in the Specifica-
tion he : —
“must particularly describe and ascertain the nature of the
invention and the manner in which the same is to be
performed.”
* also : —
“the specification must end with a distinct statement of the
invention claimed.”
Furthermore the applicant for Patent has always been required
to show the utmost good faith ; and accordingly it has long been
decided that he must not only describe his invention sufficiently to
disclose properly a way of achieving his result but he must also go
further and disclose the best way known to him of doing so.
Accordingly it will be found that sufficiency of description is
required in the Specification in three quite different spheres : —
1. The limits or ambit of the invention must be sufficiently
clearly described ; so that the public may know (particularly during
the currency of the patent) what is monopolised and what is not.
2. The nature of the invention and the means of making or
effecting it must be sufficiently described : so that the public may
know (particularly after the expiry of the patent) how to achieve the
results which comprise the new invention.
3. The best of such means known to the Applicant must be
sufficiently clearly described : so that the public may not (parti-
cularly after the expiry of the patent) be cheated, by being left as it
were with a mere empty husk of an invention, while the patentee
keeps the kernel of the invention to himself.
The second of the above heads is sometimes found alone
Ch. VU] DESCRIPTION OP THE AMBIT 231
referred to under the topic of “Sufficiency” : presumably because
this relates to that amount of description which is the minimum
sufficient for making the invention at all. But if the Specification
fails in respect of the requisite degree of particularity in the matters
falling under any one of these three heads, the Patent will be bad
for insufficiency. Therefore the term “Sufficiency” or “Insufficiency”
must be taken when used in a wide sense to relate to the degree
of particularity of description required under all three heads.
Insufficiency in description of the ambit of the invention : “ambi-
guity” : (sphere No. 1 above)
There is a clear-cut distinction between the kind of insuffi-
ciency which falls within the first of the three categories above-
mentioned and that which falls in the last two categories.
In some cases a convenient mode of indicating this distinction
has been put into use, when speaking of insufficiency in general,
by using the term “ambiguity” rather than “insufficiency” in relation
to the first head and retaining the term “insufficiency” proper for
matters in relation to the second and third heads. This distinction,
using the term ambiguity as confined to the first head above was
stated by Lord Han worth in a recent case, No- Fume Ltd. v. Frank
Pitchford & Co. Ltd . 5 citing with approval a passage used by
Luxmoore J. in the court of first instance, as follows : —
“As he rightly points out ; “Insufficiency is directed to the
issue whether the description is sufficient to enable those persons
to whom the specification is addressed to understand how the
subject matter of the patent, if it is an article to be manufactured,
has to be made, or if it is a process or method, how it is to be
worked. Ambiguity is directed to the issue whether the inven-
tion is sufficiently described and ascertained so as to enable the
public to understand the scope of the monopoly granted by the
Letters Patent.” That appears to me to be a useful statement,
when one is embarking upon the matters and the evidence to
which our attention has been directed.”
The remarks here immediately following are confined to the
kind of insufficiency which falls under the first of the three heads ;
being that which was referred to by Lord Hanworth M. R. in the
case last mentioned as “ambiguity”.
•(1935) 53. R. P. 0. at p. 236.
THE LAW OF PATENTS IN INDIA
[Cb. VII
Importance of sufficiency, under this head, in description of the
ambit of the invention.
There are strong reasons why ambiguity of this sort is not to
be permitted in the Specification of a Patent. These were concisely
alluded to by Romer L. J. in a passage 4 in the same case.
“Another essential to the validity of the Patent is that the
complete specification should sufficiently and clearly ascertain the
scope of the monopoly claimed. The reason for that is in order
that those who are engaged in the art may know how far they can
go without running the risk of having an action for infringement
of the patent started against them by the patentee. If the
complete specification does not clearly indicate the ambit of the
invention, it will redound, to use the words of Section 6 of the
Statute of Monopolies, “to the hurt of trade, and be generally
inconvenient.” One might put it a great deal more strongly —
the patent will be a public nuisance, hindering and embarrassing
those persons engaged in the particular art, from carrying on
their legitimate trade or business.”
As to distinguishing new from old : the former practice distin-
guished.
This is a matter upon which there appears to have been some
confusion or conflict of view in the .decided cases. In the older cases
there appears to be authority for the proposition that it should be
expressly stated in the Specification in reference to the various
things therein mentioned, which of them are old and which new. In
the more recent cases however it has been very definitely laid down
that no such express statements are required : provided it is made
clear from the Specification read as a whole what arc the limits of
the ambit of the invention — that is to say the new invention-
claimed.
In the older cases an objection on the ground of insufficiency
was often pleaded in the words that “the Specification did not
sufficiently distinguish what was new from what was old.” In
construing such older cases a rule of construction used to be applied
whereby anything described in the Specification which was not
expressly stated to be old was considered to be intended to be
* At p. 243.
Ch. VII]
DISTINGUISHING OLD AND NEW
referred to as new : that is to say as part of the claim comprising
the new invention. Now since the adoption of the modern system
of claiming clauses no such rule of construction is applied to the
Reading of a specification. Accordingly in the absence of such rule
of construction it is no longer necessary to retain the practice of
labelling each item in a specification with separate labels old” or
!‘new” attached to each which was a necessity to meet that old rule
pf construction.
A definite change in this respect appears to have been effected
from the time of the judgment in Harrison v. Anderston Foundry
Co . 7
The judgment of the House of Lords in that case was to the
following effect
“But the specification may fail in some other essential respect,
and so it is said to have done by the First Division of the Court of
Session. That Court held that the specification was bad, not because
it was ambiguous, or uncertain, or unintelligible, but, according to
what was said by the Lord President, because there was no dis-
covery or explanation of the novelty of the invention. No doubt*
(his Lordship said) “a new combination of old parts to produce a
now result, or produce a known result in a more useful and beneficial
way, may be a good subject-matter of a patent, but only under the
conditions that the combination shall be claimed as a combination,
and be so described as to shew intelligibly what is the novelty, and
what the merits of the invention.” Lord Gifford, following the same
course of reasoning, said : “The patentees have failed to tell the
publio what they truly claim as their invention. They should have
said what they claimed and what they disclaimed. They should tell
us. what is new, and if they claim too much the patent goes. With
great submission the claim of a combination or arrangement
of parts of a machine without more, is m itself a sufficient*
description of a novel invention i.e. of a combination of parts which
have never been combined in the same manner before. The explana-
tion of the novelty is to be found in the description of the arrange-
ment of the parts in the body of the specification. Whether the
7 (1876) L. R. 1 A. C. 574.
90
234
THE LAW OP PATENTS IN INDIA [Ch. VI!
combination claimed is new or not is a question of faot to be proved
on a trial. Where a claim is clearly and distinctly made, there oan
be no necessity for a patentee to distinguish between what is claimed
and what is disclaimed. It is enough to say in answer to Lord
Gifford’s suggestion that everything which is not olaimed is disclaimed.
It may be necessary for a patentee sometimes not to - disclaim in
his specification! but to state what he does not claim. Where f for
instance it may not be possible to explain his improvements of a
machine without describing other closely connected parts of it which
are not patented, it may then be proper and certainly prudent for
him to state that he does not claim these as parts of his invention
and to add a distinct description and limitation of his claim. The
opinions, of the Judges of the Court of Session were» in the
argument, maintained on the authority of Lord W.estbury in Foxwell
v. Bostock 8 and certainly the observations of that noble and learned
lord closely resemble those which I have mentioned of the Lord
President and of Lord Gifford. In the case cited, Lord Westbury
said, “The term ‘combination of machinery’ which has of late been a
favourite form of words with patentees, is nothing but an extended
expression of the word ‘machine.’ It is the word ‘machine’ writ
large, and as a patent for an improved machine in the specification
of which the improvement is not particularly stated and described,
would hardly be attemped to be supported, so neither in my judgment
can the patent for an improved arrangement or combination be
supported in the specification of which there is nothing to distin-
guish the new from the did .” 8 It cannot be doubted that in
a patent for an improved arrangement or oombidation of machinery
“the specification must” (as Lord Westbury said in Foxwell -V..
Bostock ) ''describe' the improvement and' define the novelty
otherwise and in a more specific form than by the general
description of the entire machine.’’ But it is clear that if the
claim is for a combination of partioular parts of the machine and
for that only, the differentia (to use Lord Westbury’s expression) is
sufficiently assigned. And as it is admitted that there may be a good
patent for a new combination of parts, all of which or a portion of
Which are severally old, upon what principle can a patentee claimin g
II
4 De. Q. J. and 8.13.
Oh. VII] PRESENT PRACTICE 236
a combination be required to distinguish the new and the old parts
j^jpg^ each other ?” 9
' It is no doubt this changed practice which was intended to be
referred to when Fletcher Moulton L. J. made the oftqueted obser-
vation 10 that : — .
“The patentee must distinguish what is new from what is old
by his claim : he need not distinguish what is new from what is old
in his claim.”
As to distinguishing new from old : present practice and require-
ments.
Even at the present day it is as true as it was before, that : —
“Every party is bound to tell the public clearly by his speci-
fication what he claims and what they may do or not do without risk
of an action for infringing the patent.” 11 It is essential that it is
made clear of what elements that, for which the monopoly is claimed,
consists and the nature thereof ; but if that is done that is enough.
The result is that an objection for insufficiency alone on the ground
that the limits of the ambit of the invention are not sufficiently
described, should but rarely be successful.
There will nevertheless still be cases where the claim is
unintelligible or ambiguous : i.e. where it is not possible from the
specification to understand clearly, what is claimed as the
monopolised invention and what is not. In such cases 12 an objection
of insufficiency on the ground now under discussion will succeed :
as clearly appears from the case next mentioned.
* That case has been followed in the following cases : Moore v. Bennett 1. R.
P. 0. 129, 153 (H. L.) Proctor v. Bennie, 4. R. P. C. 363, (C.A) ; Perry ▼. La Societe
de Lunetiere, 13. R. P. 0. 661 ; Hookham v. Johnson, 14. R. P. G. 525, 558 ; Patent
Exploitation Co, v. Siemens Brothers <Sb Co. Ltd., 21. R. P. C. 541, (H. L) ; British
United Shoe Machinery v. Thompson, 22. R. P. C. 177 ; British United Shoe
Machinery v. Fussell, 25. R. P. 0. 631, (G. A) ; Lynch v. Philips, 26. R. P. C. 389,
I; H. ; international Harvester Co. ▼. Peacock, 25. R. P. G. 763.
" In British United Shoe Machinery v. Fussell (1906)25 R. P. 0. 631 at
p.651.
11 See Gibson v. Brand (1842) 1 Web. P. 0. 640.
ia See Glover A (jo. Ltd. v. American Steel & Wire Co. (1902) 19 R. P. 0.
109: Tubes Ltd. v. Perfeeta Seamless Steel Tube Co. Ltd. (1903) 20 R. P. 0. 77
at p.101 (LordDavey) : British Ore l Concentration Syndicate Ltd. t. Minerals
Separation Ltd. (1910), 27 R. P, G. 33 (H. L.) at p. .47 (Lord Halsbury) :
Linotype tk, Machinery Ltd. v. Hopkins (19l0).27 .R. P.C. 109 (H. L.) at p.ll2
(tordXorebum) : British Vacwum Cleaner .Oo. lAii,y. L. 8. W.JLGo^(lQ12)
29 R. P, 0. 309 at p. 320 (LordXorebUm). v y ~ : ' ■'
236 THE LAW OF PATENTS IN INDIA [Ch. VH
Degree of particularity required In description of the ambit of the
invention,
A recent case in which the Patent was held invalid solely on
the ground of ambiguity in the Specification was the infringement
suit of R. W. Crabtree <& Sons Ltd. v. R. Hoe <fr Co. Ltd. 18 In that
case the point was fully discussed and certain observations made by
Mr. Justice Bennett in emphatic language as to the duty of patentees
and persons drafting Specifications, to use the clearest possible
language in describing the ambit of the invention : that is the scope
of the monopoly claimed. The material observations were as
follows : —
“The Defendants here contend by way of defence that the
Complete Specification of the Patent in suit does not sufficiently or
clearly ascertain the scope of the monopoly claimed. In the case of
the Natural Colour Kinematograph Co. Lt. v. Bioschemes Lt. reported
in 32 Reports of Patent Cases, Lord Loreburn is reported at line 16
of page 266 as having used the following language : “There seems to
be some danger of the well . known rule of law against ambiguity
being in practice invaded. 8ome of those who draft specifications
and claims are apt to treat this industry as a trial of skill in which
the object is to make the claim very wide upon one interpretation of
it, in order to prevent as many people as possible from competing
with the patentee’s business and then to rely upon carefully prepared
sentences in the specification which it is hoped, will be just enough
to limit the claim within Bafe dimensions if it is attaoked in Court.
This leads to litigation as to the construction of specifications, which
could generally be avoided if at the outset a sincere attempt were
made to state exactly what was meant in plain language. The fear
of a costly law suit is apt to deter any but wealthy competitors from
' contesting a patent. That is all wrong. It is an abuse which a
Court can prevent, whether a charge of ambiguity is or is not
raised on the pleadings, because it affects the public by practically
enlarging the monopoly and does so by a kind of pressure which is
very objectionable. It is the duty of a patentee to state clearly and
distinctly, either in direct words or by clear and distinct reference,
the nature and limits of what he claims. If he uses language which,
when fairly read, is avoidably obscure or ambignous, the. patent is
** (1935) 52. B. P. C. 367 at p. 380 to 389tBennett J). ' • . • " .
DEGREE OF PARTICULARITY
237
Ch. vn]
invalid, whether the defect be due to design or to carelessness, or to
want of skill. Where the invention is difficult to explain, due allowance
will, of coarse, be made for any resulting difficulty in the language.
But nothing oan excuse the use of ambiguous language when simple
language can easily be employed, and the only safe way is for the
patentee to do his best to be clear and intelligible. It is necessary
to emphasise this warning.” In the same case Lord Parker of
Waddington is reported at line 46 on page 268 of the report as having
used the following language : "My Lords, I have said enough to
dispose of this appeal, but in view of what has just been said by my
noble and learned friend Lord Loreburn I should like to add this.
Patents are granted by the Crown in consideration of the disclosure
of some invention likely to benefit the public and on the representa-
tion that such disclosure is made by the complete specification. In
preparing the complete specification, therefore the applicant for a
patent must observe the utmost good faith. The intentional introduc-
tion of an ambiguity for the purpose of misleading the public or of
embarrassing them in the exercise of their Common Law right to
trade in such manner as they think best, would be alone sufficient to
avoid the patent, and in a case reasonably capable of unambiguous
statement the want of good faith may be gathered from the terms
of the specification itself. In such a case I apprehend that the Court
might on its own initiative, declare the patent to be invalid. Further,
though it may be true that in construing the instrument inter parties
the Court is bound to make up its mind as to the true meaning, this
is far from being the case with a specification. It is open to the
Court to conclude that the terms of a specification are so ambiguous
that its proper construction must always remain a matter of doubt
and in such a case, even if the specification had been prepared in
perfect good faith, the duty of the Court would be to dedaro the
patent void. Once again, though the Court may consider that the
meaning of the specification is reasonably clear, yet if the specifica-
tion contains statements calculated to mislead the persons to whom
it is addressed, and render it difficult for them without trial And
experiment to comprehend in what manner the patentee intends his
invention to be performed, these statements may avoid the patent.
The above principles may be thought to bear, somewhat hardly on
patentees and their Agents. A person may arrive at a valuable
invention without adequately comprehending the particular point
THE LAW OF PATENTS IN INDIA
[Gh. V H
in which the invention is new or valuable and a patent agent may be
insuffioiently instructed by his principal, And, however carefully he
may consider the terms of the specification he is employed to draw,
he may quite easily fail to anticipate the points which may be raised,
if and when the validity of the patent comes in issue. .The Court
however, will.always make due allowance for the difficulties of the
oase, and will not impute mala fides without strong reason, or be
astute to deprive a patentee of the benefit of a valuable invention,
either because of his imperfect acquaintance with the art or because
of the oarelessness or want of skill of his agent. In; the oase of
the present Specification, 1 oan see no difficulty in the way of
the Patentee making it clear what he claimed. If his claim was
to a monopoly for all mechanical contrivances for preventing the
fudge box cylinders being brougnt into printing contact with
the impression oylinder until they were running at the oorrect
speed and in register in the peripheral direction with the impression
cylinder and for preventing the disconnection of the mechanism
driving the fudge box cylinders whilst they were in contact with the
impression cylinder, it would have been possible to have made that
claim in plain and simple language. If his claim was limited to! the
narrow olaim for a monopoly in the particular interlocking mechanism
described and illustrated, nothing I think, could have been simpler
than to say so. But in this case, whether it hasbeen done deliberately
or not Ido not pause to consider, the Specification is so phrased as
to enable the Patentee to contend for either view, and my duty is,
on that ground, to hold the Patent void, aud to dismiss the action
with costs.” 14
The Ambit may appear from Claiming Clauses or from these read
with the rest of the specification.
It is common for the ambit of the invention to he made
clearly apparent from the Claiming Clauses alone. It is the : well
known common practice to have claiming clauses at the end of
a specification. Moreover Rule 13(1) provides that the specification
shall terminate with a clear and succinct statement of the invention
claimed, distinct from the body of the Specification. These claiming
14 (See also Natural Colour Kinematograph Co. Ltd. v. Bioscheme: Ltd.
(1016) 32. R. P. 0. 266 at p. 266 at p. 268. See also Terrell (8th edn.) p. 122 et
scqi'.: ■ : '\ l ■■■ v.; r.: -
Gh.VH] DRAWINGS 239
clauses or “claims” as they are commonly called are usually drafted
with the direct object of defining the limits of the invention and of
the monopoly claimed. But as the Specification is to be read as a
whole, it is not necessary that the claiming clauses should be entirely
or solely self-contained . 15
As to the Drawings.
It has been held that ordinarily the Drawings alone cannot
define the limits of the ambit of an invention. 1 *
But in the case of an invention consisting only of an improve-
ment, semble, the ambit may be made to appear from the drawings
alone . 17
Where the invention claimed is for an improvement.
It is as necessary as ever that it should be made clear in what
the improvement consists. The decision in Williams v. Brodie,™ the
earliest authority for this proposition is still it is submitted, good
law.
In that case the invention consisted of an arrangement of
inserting a pipe into an old stove for carrying the air into the stove,
but the specification embraced the whole apparatus ; and the patent
was held void.
This is a good example showing how insufficiency and want of
novelty overlap in practice. For it would have been equally true
to say that the Patent was void for want of novelty as for insuffi-
ciency : if that which was olaimed was taken to be clear (the whole
stove) then it was not new.
Where the invention claimed is for a combination.
Where the invention olaimed is for a combination it is not
necessary to explain whioh parts of such combination are new.
M. See Fletcher Moulton at p. 87 : Thorston Nordenfelt v. Gardner (1884)
1 R. P. C. 61. (G.A.) at p. 69 : Thomas v. Welch (1866) L. R. 1 C. P. 192 : Parhes
t. Stevens (1869) L. R. 8 Eq 358 : Vickers, Sons d> do. Ltd. v. Siddel (1898)
7 R. P. 0. 292 (H. L.) .at -p. 303, 306 : TubesLtd. v. Perfecta Seamless Steel Tube
do. Ltd. (1903) 20 R. P. C. 77 (H.L).
I * See Robertson v. Purdey (1907) 24 R. P. 0. 273 at p. 297.
II See George Hatterseley <t> Sons Ltd. v. George Hodgson Ltd. (1906)
23 R. P. 0. 192 (H. Li) ; ■
*• Before 1785. See 1 Web. P. 0. 76 : and aee Edmunds at p. 115.
240. THE LAW OF PATENTS IN INDIA [Oh. VU
As it was put in argument in Kaye v. Chubb <fb Sons Ltd. by
Lord Watson 19
“If you claim a combination, you need not say which of the
parts are old .” 20
Insufficiency of directions : (spheres Nos. 2 & 3 above).
Insufficiency of the other kind, that is to say insufficiency
of directions how the invention is to be put into effect or performed
or carried out may now be considered. The degree of the particu-
larity required was shortly stated by Romer L. J. in No Fume Ltd.
v. Frank Pitchford & Co. Ltd. (supra) as follows : —
“Let me deal with the question of sufficiency first. Be it
observed from the very words I have used, that the Patentee fulfils
his duty if in his complete specification he describes and ascertains
the nature of the invention, and the manner in which the invention
is to be performed, sufficiently and fairly. It is not necessary that he
should describe in his specification the manner in which the inven-
tion is to be performed, with that wealth of detail with which the
specification of the manufacturer of something is usually put before
the workman who is engaged to manufacture it.”
Rules of the construction of the specification.
What may be sufficient directions to enable an expert to com-
prehend an invention and to enable him to make the requisite article
or to put into practice the requisite process, as the case may be, may
be insufficient for a person less skilled in the art. Therefore it is
a matter of some importance when a particular specification is in
question for alleged insufficiency, to postulute what degree of skill
is to be imputed to the person who is to be taken to be the addressee
of the specification. Then again a given specification may contain
certain omissions in the directions contained in it, it may be as to
dimensions or proportions or other details* which a person being
given the specification for the purpose of making the requisite inven-
ted article or putting into practice the invented process, may be
capable himself of making good. Before deciding whether that par-
ticular specification is bad or not for insufficiency it will then become
necessary to postulate bow far it is to be considered reasonable that
* • 4 K. P. C. 23 ; 4 K. P. C. 289 (0. A.) ; 5 R. P. C. 641 (H. L.)
ao (1888) 6 R. P. C. at 649 : and see Edmunds at p. 118.
Oh. Vfl]
INSUFFICIENCY OF DIRECTIONS
241
the -addressee may by trial and error himself make good what has
been omitted in the directions contained in the Specification. Cer-
tain principles to be applied in construing a. Patent Specification as
to both these points have been laid down in the decisions of reported
cases. The effect of these principles is noted under the next follow-
ing sections.
Degree of skill to be Imputed to the addressee.
It has been held that the person to whom the specification is
supposed to be addressed should be taken to be one competently
skilled in the art or trade to which the Patent relates.
The point was fully considered together with the effect of pre-
vious cases in No-Fume Ltd. v. Frank Pitchford & Co . Ltd. 21 where
among other passages to the same effect, the test originally stated by
Lord Kinnear was cited by Lord Hanworth M. R. with approval in
this passage : —
“I then come to the oase of Watson Laidlato <& Co. Ltd. v.
Pott, Cassels and Williamson (1911) 28. R. P. C. 565.
Lord Kinnear dealB with the matter at page 578, his
judgment being one which was approved in a later
case by the House of Lords: 22 “ It comes baok therefore,
in my opinion, really to the original question : Has he
done enough to show to a well-informed and properly
skilled workman what the thing patented is which
he is required to construct ?”
In the same case the observations of Jessel M. R. in Otto v.
Linford 23 were also cited with approval : —
“That was a case relating to the Otto gas engine , and it had
been alleged, among other things, that the patent was void for
insufficiency, inasmuch as the specification did not show the propor-
tions in which the air was to be put in as regards the combustible
mixture. Sir George Jessel said this, on page 41 : “The first
thing to be remembered, in specifications of patents, is that they are'
addressed to those who know something about the matter. A
specification for improvements in gasmotor engines is addressed
* 1 (1935) 52. R.P.C. 231 at p. 240~
** (i. e. British Thomson- Houston Co. Ltd. v. Corona Lamp Works Ltd.
(1922) 39. B. P. G. 49).
(1882) 46. Law Times N. 8. 35.
31
THE LAW OP PATENTS IN INDIA
[Ch. VB
to gasmotor engine- makers and workers, not to the public outside.
Consequently you do not require the same amount of minute
information that you would in the case of a totally new indention,
applicable to a totally new kind of manufacture.”
If the Patent relates to more than one art then it may be
taken to be addressed in respect of different parts of the Specifica-
tion to different persons. As it was put by Lord Parker in Osram
Lamp Works Ltd. v. Pope’s Electric Lamp Co. 24
“Both in interpreting and in considering the sufficiency of a
Specification the court is concerned, not with what the patentee
meant by the words he used, but with what those to whom the
Specification is addressed would, at the date of the Patent, have
understood him to mean. Jt follows, that where questions of
interpretation or sufficiency arise, the Court must ascertain the
persons to whom the Specification is addressed, and, when the
Specification deals with technical matters, must instruct itself as to
the technical knowledge which those persons may reasonably be
supposed to have possessed at the date of the Patent. A patentee
must, in his Specification, describe and ascertain not only the nature
of his invention, but also the manner in which the same is to
be performed. A Specification may therefore be considered as
addressed, at any rate primarily, to the persons who would, in
normal course, have to act on the directions given for the per-
formance. These persons may be assumed to possess not only a
reasonable amount of common sense, but also a competent knowledge
of the art or arts which have to be called into play in carrying the
patentee’ 8 directions into effect. I say art or arts because in
carrying out the directions given by the patentee it may well be
necessary to call in aid more than one art. Some of the directions
contained in a Specification may have to be carried out by skilled
mechanics, others by competent chemists. In such a case, the
mechanic and chemist must be assumed to co-operate for the purpose
in view, each making good any deficiency in the other’s technical
equipment. The Specification cannot be considered insufficient
merely because the mechanic without the aid of the chemist* or the
chemist without the aid of the mechanic would be unable to com-
prehend the meaning of or to carry into effect the directions
given by the patentee.”
34
11017) 34. R. P. C. 369 (H. L.) at p. 301.
Ch. Vn] DEGREE OF BE1LL IMPUTED TO THE ADDRESSEE 248
Regarding trial and error.
On the one hand it should be noted that a Specification which
is so laokiog in the directions given in it that in order to make the
requisite product or to carry out the requisite process as the case
may be, the addressee is compelled to use further invention of his
own, when otherwise he cannot attain the end in view, will be bad
for insufficiency.
On the other hand in some intances the addressee may be
reasonably expected to have to make some tests in the way of trial
and error, though not in the way of invention, before achieving a
final result. And in such cases if by reason of certain omissions of
details in the Specification some room is left for such tests for
trial and error, the Specification is not neccessarily bad for that
reason.
How far each of these somewhat opposite principles of cons-
truction may be applied and their inter-action was considered in the
recent case of No-Fume Ltd. v. Frank Pitchford & Co. Ltd. 26 in which
previous cases were also reviewed. The principle that there must
not be the need for any exercise of the inventive faculty by the
addressee was emphasised in all the judgments in the Appeal Court.
In particular Homer L. J. (after the observations already cited
above) said this : —
“Specifications very frequently contain mistakes ; they also
have omissions. But if a man skilled in the art can easily rectify
the mistakes and oan readily supply the omissions, the patent will
not be held to be invalid. The test to be applied for the purpose
of ascertaining whether a man skilled in the art can readily correct
the mistakes or readily supply the omissions, has been stated to be
this : Can he reotify the mistakes and supply the omissions
without the exeroise of any inventive faculty ? If he can, then
the description of the specification is sufficient. If he cannot, the
Patent will be void for insufficiency. That principle was laid down
— I do not know whether for the first time or not in a reported
oase — in the case of The King v. Arkwright , reported in the first
volume of Webster’s Patent Cases, p. 64. There Mr. Justice Buller,
in summing up to the Jury, said this : “It has been truly said by
the counsel, that if the specification be such that meohanical men of
IS
(1936) 52. R. P.0.231.
[Ch. vn
8M THE LAW OF PATENTS IN INDIA
common understanding can comprehend it, to make a machine
by it, it is sufficient ; but then it must be such that the mechanics
may be able to make the machine by following the directions of
the specification, without any new inventions or additions of their
own/' It is plain I think, that by the word “additions” the learned
Judge meant inventive additions. That principle has been applied
in numerous cases, to which Mr. Whitehead called our attention
in his opening ; and to which the Master of the Rolls has already
referred.”
As to trial and error the following observations were made by
Maugham L. J. in the same case 21 : —
“I think it emerges from the Watson, Laidlaw Case and the
Half-Watt Lamp Case, that a specification is not bad because, after
explaining the nature of the invention and the necessary main
condition for carrying it into effect, the patent leaves out some
of the further conditions, for example, dimensions, temperatures,
quantities or materials involved, being things which necessarily
vary with different applications of the invention, to be determined
by actual trial and error. Such trial and error can no doubt be
described in popular language as further experiments : but they are
not experiments — this has already been pointed out by Lord Justice
Romer — that involve invention in any true sense. If further inven-
tive steps are necessary the specification would, I think, be bad.
The provisoes to that proposition may be repeated for clearness.
The inventor must disclose the beet conditions of which he knows ;
and secondly, as I have already said, no experiment involving new
invention must be necessary, and everything that is left open must
be ascertainable by an ordinary skilled workman by mere trial and
error.” 27
Sufficiency in description of best method.
The principle that the specification must contain with proper
particularity a description of the best method known to the Appli-
cant for Patent at the time of making the application has been
confirmed in many cases.
*• (1935) 52. R. P. C. 231 at p. 250.
* ’ See also Edison db Swan Electric Company v. Holland (1897) 6. R. P. C.
243. at p. 277 and p. 280 ; also Terrell (8th edn.) p. 139 et seq.
Oh. VO] DESCRIPTION OF BEST METHOD 246
- In British Dynamite Go. v. Krebs?* it was assumed in the House
of Lords to be the law that “the inventor was bound to give the
best means at his disposal in order to achieve the result.” The only
question which there arose was whether he had done so or not ; and
it was held that as the inventor, Baron Noble, had only discovered a
certain silicious earth called “Kieselguhr” afterwards, his specifica-
tion was not objectionable for not containing specific mention of it
as being the best material for his dynamite.
The prinoiple was more recently confirmed in Franc Strohmm -
ger <S> Cowan Inc. v. Peter Robinson? 9 The point arose in connection
with an application to amend the defence by adding a plea of an
objection that the Patentee had not disclosed in his Specification the
best method of making the invention known to him. The point was
dealt with by Maugham J. in these words : —
“It is suggested that Mr. Langsdorf, the patentee (and
the statement is made from the evidence which he himself gave
in the box) deliberately omitted to describe the best material
known to him for the lining of his patented tie. Now it is
perfectly manifest that a patentee is under an obligation to
disclose the best method known to him at the date of the complete
specification of carrying out the invention, and it is true that, if he
omits to do so, the patent is invalid, because the way in whioh it is
generally stated is that the Crown in such a case has been deceived
in the grant.”
(The learned Judge then went on to consider whether the point
could be taken, not having been pleaded ; and decided the point was
not an issue in that case).
The principle that the patentee is bound to give the best
information known to him at the date of the Patent was also
confirmed in the recent case of No-Fume Ltd. v. Frank Pitchford <&
Co Ltd . 80
Insufficiency : how far a question of fact
The deoision of the question of insufficiency is olearly depen-
*• (1806) 13. R. P. 0. 190 (H. L.) at p. 195.
a " (1930) 47. R. P. G. 493 at p. 501. (Cf also the argument at p. 497).
,0 (1935) 52. R. P. 0. 231 (G. A) at p. 248 (line 42.) in the Court of Appeal.
See also Terrell (8th edn) p. 146 et eeq : quoting at p. 147 Coleridge J. in Heath v.
Unwin 2. W.P. 0. 236 at p. 243.
246
THE LAW OF PATENTS IN INDIA
[Cb. vn
dent in many oases on a construction of the Specification. Such
questions of construction are finally, as are all questions of the
oonstruction of any documents, a question of law for the Court.
Thus most of the question of sufficiency so far as it is confined to
sufficiency as to the ambit of the invention will ordinarily be a ques-
tion of law. On the other hand the question of sufficiency in directions
as to the means of producing the invention and as to the best means
of doing this will largely, if not entirely, be a question of fact ; as to
matters of a technical nature ; as to the state of knowledge among
persons in the trade to whom the specification may be deemed to be
addressed ; and as to whether or not such persons ordinarily skilled
in the art in question would in fact be enabled by the description in
the Specification to produce the invented result. Evidence will be
received on these points. Indeed it is common for the evidence of
witnesses to be tendered to prove that the invented result has in
fact been achieved from the description in the Specification. 31
At what stages objections for insufficiency may be raised in British
India.
(i) Before acceptance of the application :
This is one of the principal topics to which the Patent Office
directs its attention when making its examination before accepting
any application for Patent. The objection may be raised by the
Patent Office at this stage under the express provisions of Section
5 (1) (a), 5 (1) (o) and 5 (1) (d) ; possibly Section 5 (1) (b) may also
cover questions of insufficiency.
(ii) In opposition proceedings before the Controller : —
An opposer is entitled to raise objections of insufficiency at
this stage under the clear provisions of Section 9(lXo), which are as
follows : —
(on the ground) "that the nature of the invention or the
manner in which it is to be performed is not sufficiently
or fairly described and ascertained in the specification.”
** See Shaw v. Jone«-(1897) 6. R. P. C. 328 and Fletcher Moulton at p. 100.
Also No-Fume Ltd. t. Frank Pitchford <S> Co. Ltd. (1935) 52. B. P. 0. 231 (G. A.)
at p. 245 1. 23. Insufficiency in directions for disclosure of the best method known
to the patentee waB clearly shown to be a question of fact in Franc-Stvohmenger
and Cowan Ine v. Peter Robinson (1930) 47. B. P. 0. 493 at p. 502 (Maugham F).:
Ch. VII] AT WHAT STAGES OBJECTIONS MAY BE RAISED 247
(iii) On a petition to Court for revocation s —
The Petitioner is entitled to raise objections of insufficiency
at this stage but only under the restricted conditions of a case which
can be brought under Section 26(lXg). It is to be noted that the
wording of that section relating to revocation proceedings after
grant differs considerably from the wording of Section 9(lXo) which
relates only to opposition proceedings before grant. Section
26(lXg) gives the ground on which a Petitioner may obtain revoca-
tion of a Patent after grant as follows : —
“that the whole or a part of the invention or the manner in
which the whole or a part is to be made and used as
described in the original or any amended specification
is not thereby sufficiently described and that this
insufficiency was fraudulent or is injurious to the
public.”
The result is that on such a Petition it is essential, it is submit-
ted, for the Petitioner to make out a case of fraud or of injury to
the public in relation to the insufficiency of which he complains.
In this respect the Indian Act differs materially from the
English Acts 1907-1932. Under Section 25(2Xh), Section 25(2Xi)
and Section 25(2)(j) of the English Act each of the three different
forms of insufficiency already referred to in the present chapter is
made a sufficient ground in itself (irrespective of fraud or anything
else) upon which to obtain revocation of a Patent in the United
Kingdom. As a matter of comparison and contrast (for reference
when reading the reports of current English cases on this point)
the wording of those three subsections may be noted : it is as
follows : —
“25(2)(h) that the complete specification does not sufficiently
and fairly describe and ascertain the nature of the
invention and the manner in which the invention is to
be performed ;
25(2X0 that the complete specification does not sufficiently
and clearly ascertain the scope of the monopoly
claimed •
2o(2)(j) that the complete specification does not disolose
the best method of performance of the invention known
248
THE LAW OP PATENTS IN INDIA [Ch. VII
to the applicant for the patent at the time when the
specification was left at the Patent Office .” 31
(iv) In an infringement suit as a defenoe : —
The position is the same for a defendent in such a suit as for
a Petitioner on a Petition for revocation : by virtue of Section
29(2).
PART n— THE OBJECTION THAT THE APPLICANT
FOR THE PATENT IS NOT THE TRUE
AND FIRST INVENTOR.
True and First Inventor.
Having considered in the preceding paragraphs of this chapter
that requisite of a valid patent under the head of Sufficiency which
relates to the Specification and the degree of clarity of description
requisite to be used therein, it is proposed next to consider a different
requisite, which also may be discussed in connection with the cir-
cumstances in which the Patent was granted : that is to say the
topic commonly indicated under the head of “the True and First
Inventor.”
The nature and origin of this requirement.
Formerly it was common to plead when attacking a Patent that
“the applicant for patent (or the patentee if after grant) was not the
true and first inventor.” This plea was originally used as a means
of pleading want of novelty : the words being used primarily in the
sense that the invention was not new, since some other person, not
the applicant for patent or the patentee, was the true and first
inventor of the particular invention in question.
Nowdays this plea is not commonly used if it is merely
intended to plead want of novelty ; and should not ordinarily be
used for that purpose it being more usual, if it is intended to plead
want of novelty, simply to plead that the invention was not new,
giving the necessary particulars of how it has beeu anticipated.
* 9 See also Section 26 ( 1) (d).
1 See Morgan <S> Windover (1898) 7 E. F. 0. 440 at p. 449 ; Thompson v.
Macdonald db Co. (1891) 8 R. P. 0. 5 at p. 9 ; Pneumatic Tyre Co. Ltd. v. Gas-
swell (1896) 13 R. P. C. 164 at p. 187 ; Hickson v. Redfern (1905) 22 R. P. G. 307;
Hill v. Thomas & Sons (1907) 24 R. P. C. 415 at p. 424 (O. A.) ; Smith’s Patent
(1912) 29 R. P. 0. 339 at p. 340.
Ch. VII]
TRUE AND FIRST INVENTOR
249
There is however another meaning also embodied in the words ; and
in this other meaning the plea may still be used as raising an
objection distinct from an objection of want of novelty pure and
simple.
The matter of the True First Inventor is referred to expressly
in Section 6 of the Statute of Monopolies to the following effect : —
“Provided that any declaration before mentioned shall
not extend to any letters patent and grants of privilege
of the sole working or making of any manner
of new manufactures within this realm to the true and first inven-
tor and inventors of such manufactures”
The declaration before-mentioned refers to the declaration
stating that monopolies ordinarily are illegal. It is seen therefore
that what is declared not illegal is only a patent. . .such as is granted
to the true and first inventor or inventors.
This requirement is again referred to in the Indian grant of
Patent in the passage to the following effect : —
“Whereas (the patentee) hath declared that he is the true and
first inventor (of the invention) (or the legal repre-
sentative or assign of the true and first inventor)”
The result is that it is a fundamental requisite of a valid
Patent that the patentee should be the true and first inventor of the
invention to which the patent relates ; or that he should at least be
the legal representative or assign of the true and first inventor of
the invention.
The invention itself may be a new invention and yet the
patentee may not be in fact the true and first inventor thereof. The
plea for this limited purpose is commonly employed even at the
present day as an objection to the proposed grant of a patent or to
the validity of a Patent whioh has been granted.
It becomes necessary to consider the meaning of the term True
and First Inventor.
Meaning of the term “True and First Inventor”.
The meaning of the word “inventor” in Patent Law differs from
the popular conception of the word ; and it is essential to appre-
ciate the meaning whioh it bears uniformly whenever used in connec-
tion with Patent Law.
32
THE LAW OF PATENTS IN INDIA
[Ch. VH
Whether this legal meaning is one which the word has second-
arily acquired in legal use or whether it is in fact the original
primary meaning of the word is a matter which is now, though
interesting, for practical purposes immaterial. There is mnoh to be
said for the latter view, which has been propounded in Haddan's
Compendium of Patents and Designs : —
“In general parlance an inventor is one who, by thought or
experiment, finds out or produces something new, and to a certain
extent this is a true definition ; but in British law the term
“Inventor” has a wider definition. The term inventor primarily
intended an importer, as we should now call it, one who
caused the invention to become known in this realm. The
etymology of the word supports this view. It is derived from
two Latin words in — in or into, venire — to come. As we speak
of an inventor of a manufacture, we must imply that the word
inventor is used in a 'transitive sense, that causation is implied
in the suffix — or. The meaning will be, “he who causes the
invention to come in.” The same causation is implied in such words
As “grantor”, “assignor”, “lessor”, etc., each meaning the person who
oauses the act, and from whom it proceeds, thus proving that the
above is the correct definition. The popular notion more nearly
Coincides with a person to whom an invention occurs, one to whom
ideas come; such a person would more correctly be termed an
“Inventee”. Stress must be laid on the causation implied in the
word inventor, since on this view only is its legal meaning at all
understandable, and reconcilable with the judicial decisions to which
we shall presently refer, and with the present state of the law on
the subject ”. 2
Whichever meaning of the word is in truth the primary and
whichever is in truth the secondary, in any event to*day the legal
meaning of the word in Patent Law must be acknowledged to differ
from its current popular meaning to some extent. Thus it is well
established that when an inventor is referred to and the word is
used according to the uniform meaning possessed by it in Patent
legal parlance, English law does not look for the true and first
inventor outside the English realm ; nor does Indian Law look for
the true and first inventor outside British India. * The term true
Beep. 114 tWd.
Oh. VII]
LIMITED MEANING
and .first inventor is accordingly limited to the true and first
inventor in British India.
Meaning limited to the sphere of invention in British India.
The expression “true and first inventor” has thus come to bo
used in Patent Law in a very limited and peculiar sense. Since it
is limited to the sphere of invention in British India ; a man who
would not in ordinary parlance be considered the true and first
inventor of an invention at all, who may have been shown an
invention abroad by another, may, by being the first to import that
invention into British India, yet be truly the true and first inventor
in British India within the meaning of the expression as used in
Patent Law. And this, too, even though neither in British India or
abroad has he in ordinary parlance invented anything.
Meaning limited to inventions disclosed.
In general parlance again a person may be considered an in-
ventor even though he keeps his invention to himself as a secret. In
Patent Law however this is not so. No one is an inventor in the eyes
of the Patent Law unless and until he has disclosed his invention to
the State. When the history and policy of patents and monopolies is
considered to which reference has already been made in a previous
chapter the reason for this is readily understood. The result is
that if two persons A and B have discovered a similar invention in
different places in Britsh India, and A, who in point of time made
the discovery before B, has been working the invention as a secret
process and has not disclosed the invention to anyone : and B makes
the discovery independently and lodges an application for a Patent:
A is not entitled to say that B is not the true and first inventor.
A Patent will rightly be granted to B. A good example of this was
Dollond’s case . 3
In that case it was held in effect that Dollond was the true
and first inventor and none the less though a certain Dr. Hall had
previously made and used object glasses for telescopes which were
similar to Dollond’s invention ; Dr. Hall having kept his own
discovery secret.
Or again : A and B both discover a similar invention indepen-
» (1776) 1 W. P C. 43 cited in Terrell (8th Edn.) p. 19 and in Edmunds
at p. 431.
252
THE LAW OF PATENTS IN INDIA
[Ch. VII
dently : A in fact made the discovery first and in faot communicated
the discovery to the public. B ignorant both of the fact that A
had made the discovery and also of the fact that A bad communi-
cated it to the publio. lodges an application for a patent alleging
that he, B, is the true and first inventor. An objection that A and
not B was the true and first inventor will prevail ; but in such case
no patent will be granted. No patent can be granted to B since B
is not the true and first inventor. It is of interest to note that no
patent will be granted in such a case either to A : it is true that A
is the true and first inventor and therefore it is not for any objection
on that score that the patent is refused to A : but A has in this
case debarred himself from obtaining any patent since his invention
has ceased to be a new and patentable invention by reason of the
publication to the public prior to his application. For while it is
true, as remarked above, that no one is an inventor in the eyes of
the Patent Law until he has disclosed his invention, such disclosure
generally speaking should be by the application for the Patent and
not before. As was held in Forsyth v. Riviere “of two simultaneous
inventors (sic) he who first . communicates the invention to the
public under the protection of Letters Patent is the true and first
inventor”. 4
Definition of “true and first inventor.”
To summarise the foregoing retharks a true and first inventor
may then be defined for the purposes of Indian Patent Law as “one
who, having obtained the invention by his own mental efforts any-
where or from instruction or knowledge acquired abroad (or acquired
in British India on a communication from abroad), is the first to dis-
close the invention in British India.” 6
The following observations bearing on this point were made by
Lord Lyndhurst, C., in Househill Co. v. Neilson 6 as cited in Ed-
munds on Patents 7 : —
“If the invention is in use at the time the grant is granted the
4 Cited in Haddan at p. 115 : (1819) 1 Web P. C. 07. geo also Haddan
at p. 116.
* For further explanation and comments on the words in brackets see Chap.
IX below.
• (1843) 1. Web. P. C. 719.
’ 1890 Edn.p. 431.
Oh. vn]
COLLABOBATOBS
man cannot have a patent, although he is the original inventor : if
it is not in use he cannot obtain a patent if he is not the original
inventor. He is not called the inventor who has in his closet invented
it but who does not communioate it ; the first person who discloses
that invention to the publio is considered as the inventor. The
party must be an inventor : you need not say the inventor, because
another may have invented and concealed it ; but in addition to his
being an inventor others must not use the invention at the time
of the patent.”
Where more than one person has shared in work resulting in the
invention.
Where the inventor has obtained assistance in the working out
of details of the invention, he will none the lesB remain entitled to
describe himself as the true and first inventor, provided that the
invention was substantially invented by him and the contribution of
his collaborators was confined to matters of subsidiary detail.
Observations on the point were made, in, among other cases, the
case of Smith’s Patent 8 by Buckley J. as follows : —
“Now beyond that, supposing that Smith did make as I daresay
he did in the course of the elaboration of this thing some trifling
suggestions from time to time, as to what should be done by way of
altering the model and working out the conception which Youlten
had in mind, is he entitled to that ? As to that, I wish to read from
Mr. Justice Earle in Allen v. Ratoson (1 C.B. 551). He said : “I take
the law to be that if a person has discovered an improved principle
and employs engineers, agents or other persons to assist him in carry*
ing out that principle, and they in the oourse of experiments arising
. from that employment make valuable discoveries accessory to the
main principle and tending to carry that out in a better manner,
suoh improvements are the property of the inventor of the original
improved principle and may be embodied in his Patent ; and if so
embodied the patent is not avoided by evidence that the agent or
servant made the suggestion of the subordinate improvement of the
primary and improved principle.” In that case there was a motion
for a new trial on the ground of misdirection, and Chief Justice
Tindal in Bano, said this : “It would be difficult to define how far
the suggestions of a workman employed in the construction of a
(1906)22. B.P.O. 67 at p. 61.
THE LAW OF PATENTS IN INDIA
[Ch. VII
254
machine are to be considered as distinct inventions by him so as to
avoid a Patent incorporating those taken oat by his employer.
Each case must depend upon its own merits. But when we see that
the principle and object of an invention are complete without it, I
think it is too much that a suggestion of a workman employed in
the course of the experiments of something calculated more easily to
carry into effect the conceptions of the inventor should render the
whole Patent void.” Applying this principle, even if Smith did
take some small part in making suggestions as to the way of carry-
ing this out, those are not matters which entitle him to take out a
Patent in respect of them.” .
Similar observations were made in Sirdar Rubber Co. Ltd. and
Maclulich v. Wallingion , Weston <& Co . : — 0
“The only remaining question is as to the true and first inven-
tor. Upon this part of the case, I accept the evidenoe of the
Plaintiff James Mecredy Maclulich in preference to that given by
Mr. William James McCormack. If the Patent were otherwise
valid, the Plaintiff, would in my opinion, be the true and first inven-
tor. McCormack appears to be an excellent draftsman, and to have
assisted in carrying out Maclulich’s ideas, but the idea and invention
was that of Maclulich, and the only assistance given by McCormack
is such as an inventor may properly receive from a workman with-
out in any way ceasing to be sole; first and true inventor of an
invention. All the circumstances of the case are in favour of
Maclulich .” 10
The test will then be, it is submitted whether the collaborator’s
help was confined to accessory details or whether it extended to a
share in the disoovery of the main invention. If the latter be found
to be the case, then it may well be that both persons will be found
to have been jointly the true and first inventors.
Case of Master and Servant.
The relationship of master and servant it is submitted does
not at all affect the question who is entitled to be described as the
true and first inventor. This relationship and the implied obliga-
tions on the part of the servant, or his express obligations if con-
tained in a contract of service, may well create a legal duty on his
• (1905) 22. R.P.C. 357 at p. 267.
10 And Cf. Fletcher Moulton p. 73 note (d).
Ch. vn]
MASTER AND SERVANT
'SSS
part- either to assign the Patent to his master or to hold the Patent
after grant in trust for his master. But that is dearly a totally
different matter : depending on questions of contractual rights
totally distinct from the question who is the true and first inventor.
The principle that the relationship of master and servant does
not . in itself in any respect give the master any right to describe
himself in Patent Law as the true and first inventor was dearly
stated in the case of Heald’s Patent by the Solicitor-General in the
following passage : — 11
“But then I have to deal with the proposition upon whioh
Mr. Graham has challenged his opponents to quote an authority —
the proposition that an improvement made by a servant is the
property of his employer, so as to entitle the employer to take out a
patent for it, or to prevent the servant from taking out a patent for
it. I am not aware of any authority which lays down that the
invention of a servant, even made in the employer’s time, and with
the use of the employer’s materials and at the expense of the employ-
er, thereby becomes the property of the employer, so as to prevent
the person employed from taking out a patent for it.”
Compare also In the Matter of Marshall & Naylor’s Patent} 2
There an attempt was made in argument to contend that the master
had been entitled to take out the Patent in his own name (which
would entail describing himself as the true and first inventor.
The case was one of a Petition for Revocation filed by the servant,
Walsh, who claimed to be himself the true and first inventor. It
was held by Farewell J. that this claim was justified and the Patent
was ordered to be revoked. In the course of argument Farewell J.
made the pertinent observation : — “Marshall cannot give a lucid
explanation of the invention in any intelligible way. How can he
say ho invented it ?” “It may be observed, if the view should be
put forward that where the relationship of master and servant exists
and the master employs a servant to discover inventions on his (the
master’s) behalf, the master thereby has a right to apply for the
grant of a Patent in his own name as the true and first inventor,
that such a view is at once completely disposed of by the observa-
tion above-noted of Farewell J. It appears to be well established
11
1 ®
(1891) 8. R. P. C. 429 at p. 430.)
(1900) 17 R. P. 0. 553 at p. 555.
256
THE LAW OF PATENTS IN INDIA
[Ch. VII
that the prooeas of invention such as to constitute a man a true and
first inventor cannot be effected other than personally : and cannot
be effected on behalf of an employer through the brain of. an agent
or of a servant. Thus in many cases the real question is it difficult
question of fact whether the invention in the main has been invented 13
by the master or by the servant : or by both jointly . 14
Whether a question of law or fact.
It is submitted that the question whether a certain person was
or was not the true and first inventor will be predominantly one of
fact but that even when a finding has been come to as to the facts f
there may in some cases remain a question of law : e.g : as to prin-
ciples in regard to imported inventions: or as to principles of
priority in regard to inventions which have been kept secret. And
on such matters it is submitted, the decision of a Cout$ in British
India will be guided by the principles which have been enunciated
in the English cases.
1# For a discussion of cases on the topic of “true and first inventor” see
Edmunds (1890 edn.) p. 431 and 432 ; Fletcher Moulton (1913 edn.) p. 73 to 75 ;
Haddan (1931 edn.) p. 115 et. seq. See also the matter further referred to in
Chapter IX below : also the cases referred to under part III of this chapter.
14 Regarding the different point, for cases where dispute has arisen whether
or not the servant was bound to hold the Patent in trust for his master by reason
of the obligations arising out of his contract or by reason of personal rights
amounting to a trust between the two persons, reference may be made to the
following cases Worthington Pumping Engine Go. v. Moore (l90j%$0. R.P.C.
41 ; Edisonia Ltd . v. Forse (1908) 25. R.P.C. 546 where the Plaitlifll^jgmpany
obtained the following reliefs (i) a declaration that the Defendant was at&ustee
of the Letters Patent for the Plaintiff Company (ii) an order on the Defendant to
assign the Letters Patent to the Plaintiff or as the Plaintiff may direct (iii) an
injunction restraining the Defendant from disposing of or dealing with the
Letters Patent or putting them in practice (i?) an account of articles made (by
defendants) in accordance with the invention ; British Reinforced Concrete
Engineering Co. Ltd. v. IAnd (1917) 34. R.P.C. 101 and as to the test see at p. 109);
Hop Extract Co. Ltd. v. Horst (1919) 36. R.P.C. 177 ; Mellor v. William Beardmore
db Co. Ltd (1926) 43. R.P.C. 361 and (1927) 44. R.P.C. 175 ; Adamson v. Ken-
worthy (1932) 49. R.P.C. 57. For a success®) action for damages for breach
of a “confidence agreement” see Mectianicmftnd General Inventions Co . Ltd .
(in Liqn) and Another v. Austin and othe r} lffii 935) 153. Law Times 153. See
also Terrell 8th edn. p. 22-24 notes (g) ajjjp$h) ; and F^eher Moulton p. 74
note (q). v 'f
Ch. VII] AT WHAT STAGES OBJECTIONS MAY BE RAISED 257
At what stages the objection, that the Applicant for Patent (or
the Patentee if after grant) was not the true and first inventor,
may be raised in British India : —
(i) As to objections by the Patent Office before the acceptance
of the application : —
This is not one of the matters which the Patent Office is
required to investigate in the examination to be made by it under
Section 5. Moreover the Patent Office will ordinarily not in fact
be in the position to raise any objection of this sort. This objec-
tion it is submitted is not one which can be raised at this stage.
(ii) In opposition proceedings before the Controller ; —
This objection generally speaking is not one of the grounds
mentioned in Section 9 of the Indian Act. In cases of opposition
before grant it is therefore not open to an opposer under the Indian
Act to oppose on the general ground that the Applicant is not the
true and first inventor, if the basis of complaint is that it is a third
party who is in fact the true and first inventor. The opposer is only
entitled to take the more restricted objection of “obtaining”, as
it is commonly known : viz. : — that “the applicant obtained the
invention from him (i.e. the opposer) or from a person of whom he is
the legal representative or assign” That ground of obtaining is
open under Section 9(l)(a). Properly speaking that objection relates
to a distinct ground ; to which further reference is made towards
the end of this chapter. It is of interest however here to note
that if that objection is established, it is provided under Section
13(2) of the Indian Act that the Controller may grant the Patent to
the opposer instead of to the Applicant. In practice therefore it
frequently happens that an objection that the Applicant is not the
true and first inventor is ventilated by being raised in the form
of an objection under Section 9(lXa), through an opposition being
filed by a person who is in a position to take an objection on the
ground that the Applicant obtained the invention from him. Such
a person is more than ordinarily interested to oppose the grant since
he may not merely succeed in preventing the grant being made to
the Applicant but may succeed in obtaining the grant himself.
(iii) On a petition to Court for revocation : —
The Petitioner is entitled to raise this objection at this stage
under the express provisions of Section 26(lXc).
83
258 THE LAW OP PATENTS IN INDIA [Ch. Vli
(iv) In an infringement suit as a defence : —
The Defendant is entitled to rely on this objection as a ground
on which to have the Plaintiff’s patent declared invalid and to
succeed in his defence to the suit : the Defendant's position in this
respect bciug the same as that of a Petitioner in a petition for
revocation by virtue of Section 29(2).
PART HI. ABSENCE OF FRAUD : ALSO FREEDOM FROM
THE OBJECTION OF OBTAINING
Absence of fraud.
The principle has always been upheld that an applicant for
a Patent must act in every respect in a bona fide manner. Absence
of fraud must therefore be considered as one of the fundamental
requisites of a good Patent. It is clear, it is submitted, that if
it is established that a Patent has been obtained by fraud, the grant
will be invalid on the paramount ground that deceit his been prac-
tised on the Crown. It is submitted therefore that fraud in general,
if it be shown in any respect that the Patent was obtaiued by fraud,
will be sufficient ground in itself upon which a Patent may be
invalidated. Similarly, it is submitted that if it is shown, prior to
grant, that an application has been made which will have the effect,
if the Patent be granted, that the grant will have been obtained by
fraud, this will for the same reason be a sufficient ground in itself
upon whioh the grant should be refused to be made. This view
appears to be generally accepted in the United Kingdom and it is
submitted will prevail equally in British India. The principle was
referred to emphatically, though obiter, in Perrelts Application 1
where the Assistant Comptroller observed : — “I do not find that
the invention was obtained by^ fraud in the sense of the “moral
turpitude” which Mr. Justice Warrington referred to in his judgment
in the case of Ralston’s Patent (1909) 26. R.P.C. 313, at page
331, (lines 22-44). If I had arrived at such a finding, I should
refuse to make any grant at all upon the Application, for conscious
and deliberate fraud would render the whole Application void.”
Fraud of this general nature is not given as one of the express
grounds under the Act on which an opposition to grant may be
founded nor among the express grounds under the Act on which
‘ (1932) 49. R. P. G. 406.
Ch. VH]
ABSENCE OF FRAUD
259
revocation proceedings may be based. Nevertheless it is submitted
that if a case of general fraud could be made out at any stages of
the proceedings, it would be open to be taken as an objection on
general principles.
The very strictness of the principle that a high degree of
bona fides is essential between the Applicant and the Crown in all
matters relating to applications for Patents and the very nature of
the other requisites of a valid patent may in itself be some reason
why cases in which fraud simpliciter in a general sense is made the
sole ground of objection arc in practice met with but seldom. (In a
case for example in which the revocation of a Patent may be suc-
cessfully obtained by showing insufficiency, there may be no neces-
sity to prove a case of general fraud.)
Moreover fraud in certain specific respects is in certain
instances expressly by statute made a ground of objection to
invalidate a Patent. In any case where a charge of fraud in a
general sense may be supported, the facts will ordinarily involve
grounds for proceeding on one or more of such specific statutory
objections.
Specific statutory grounds based on fraud which may be relied on
as objections to invalidate a Patent.
In the United Kingdom under the English Act almost every
kind of case of fraud which is likely to be met with is likely to be
covered by the wide provisions of Section 25(2 )(c) which is an
express statutory ground for revocation worded as follows : —
“that the patent was obtained in fraud of rights of the person
applying for the order (i.e. of revocation) or of any person under
or through whom he claims.” Or otherwise by the wide provisions
of section 25(2X&) viz. : — “that the patent was obtained on a false
suggestion or representation.”
In the United Kingdom even under the English Act fraud is
not specifically mentioned among the grounds of opposition enu-
merated in Section 11 : though the objection of obtaining (without
mention of fraud) is given as a ground under Sec. ll(lX«).
The result under the English Act is that while it is made a
necessity for a Petitioner in revocation proceedings to show posi-
tive fraud of his rights in addition to showing that the Patent was
obtained from him, it is only necessary for an opponent in opposition
200
THE LAW OF PATENTS IN INDIA
[Ch. vn
proceedings, before the grant of the patent, to show that the Patent
was obtained from him ; and he need not establish that there was
any positive fraud on the part of the applicant for Patent.
Under the Indian Act of 1911 the grounds of objection, in
which an express reference to fraud are made, differ in their wording
considerably from the provisions abovementioned which are in force
under the English Act.
The material grounds of objection open under the Indian Act
in revocation proceedings are worded as follows : —
“26{lXe) that the applicant has knowingly or fraudulently
included in the application for a Patent or in the ori-
ginal or any amended specification, as his invention,
something which was not new or whereof he was neither
the inventor nor the assign nor the legal representative
of such inventor ;”
“26(1 X/”) that the original or any subsequent application
relating to the invention, or the original or any amended
specification, contains a wilful or fraudulent mis-state-
ment
In connection with revocation proceedings in India under the
Indian Act there is no express mention, under Section 26, of any
objection on the ground of “obtaining” ; whether with or without
fraud.
The objection which is commonly relied upon for revocation in
the United Kingdom that the Patent was “obtained in fraud of the
rights of the Petitioner” is not available as a specific statutory
ground under the Indian Act.
It is difficult to understand the reason for fraud having been
included as an ingredient in the ground given under Section 26(1 Xe),
coupled as it is with what must amount to an objection for want of
novelty or an objection on the ground that the applicant was not
the true and first inventor ; since either of those grounds even
without any substratum of fraud will in themselves be a sufficient
ground for revocation : and are expressly given as such under
Section 26(1X6) or Section 26(1 Xc). Section 26(lXe) being thus a
redundancy is seldom likely to be invoked as a ground of revocation.
In view of this and in view of the confusion of thought apparent in
its wording, it becomes unprofitable here further to consider it.
Ch. VII]
MEANING OF FRAUD
261
N. B. It would appear that Section 26 of the Indian Act is in
urgent need of drastic revision : compare and contrast the clear provi-
sions of Section 25 of the English Act.
The ground made available in India for revocation under
Section 26d)(/’) (wilful or fraudulent mis-statement in the applica-
tion or specification) will it seems be found to cover in practice most
cases in which fraud of any nature is sought to be relied on as a
ground of objection : just as these are in practice mostly covered,
though from a different angle, by the ground made available in
England for revocation under the English Section 25(2)(fc) together
with that under the English Section 25(2)(c).
In regard to opposition proceedings in India it is seen that,
like the English Act, the Indian Act contains no direct mention of
fraud among the objections enumerated for opposition under Sec-
tion 9 ; and the ground comprising the objection for “obtaining”
given in Section 9(lX«) is in this respect precisely similar in its
wording to the ground under the English Section ll(lXffl) which
has been cited above.
In such opposition proceedings to establish an objection under
Section 9(lX«) of the Indian Act it follows, equally, that it is not
necessary to show the existence of any fraud at all.
Meaning of fraud.
It has been held in the United Kingdom that fraud when
required to be shown must be such as involves grave moral culp-
ability in the person obtaining the Patent. The following observa-
tions were made by Stirling J. in the case of Avery’s Patent 2 in
considering the issue of fraud which arose in connection with the
question whether the Patent had been obtained in fraud of the
Petitioner’s rights (being the objection founded on the wording of the
English Act) :
“The question still remains in this case : was the patent in the
language of the statute obtained in fraud of . the Petitioner’s rights ?
The first point to be determined in answering that question is the
sense of the word “fraud” as used in the Statute. “Here we have
not to deal with a statute 300 years old, like the Statute of Mono-
’ (1887) 4. P.O.R. at p. 165 as cited in Edmunds at p. 364 : or 4. R.P.C. 165,
322 (0. A.)
THE LAW OF PATENTS IN INDIA
[Ch. vn
polies, nor is there any current of decision to fix the sense in which
the word therein is used, and in my judgment it would be wrong to
construe the word, occurring as it does in an Act passed little more
than three years ago, and in the absence of any context imperatively
demanding such a construction, otherwise than in accordance with
the usual construction of the English language, and consequently as
involving grave moral culpability iu the person obtaining the
patent.”
Observations to the same effect are made in Fletcher Moulton
on Patents thus : — “Fraud here, as ordinarily, implies a dishonest
action of some kind, and a mistake honestly made does not give
rise to any claim under this head, nor will the Court consider
whether a party, who has acted honestly, has correctly interpreted
his legal rights. The fraud must be proved conclusively, and the
Court is not ready to infer it.” 3
It is submitted that the foregoing observations are equally
applicable as defining the nature of the fraud required to be estab-
lished in order to obtain revocation of a Patent in India under Sec-
tion 20(f) (or under Section 26(e) should that section be invoked)
as under the relative section of the English Act already referred to ;
and that the term “fraud”, or “fraudulent” in connection with the
grounds stated under the Indian Act has the same meaning as it
has under the English decisions ; and tl^at the force of such decisions
is in nowise affected by the circumstance that the precise ground
which was being construed in those cases (i.e. the ground of
“obtaining in fraud of the rights of the Petitioner”, so worded) does
not find a place under the Indian Act.
Only Fraud within British India a ground of invalidity.
It has been generally held that the only fraud which can be
relied on as a ground of invalidity against a Patent is fraud within
the country covered by the grant. This principle appears to be a
corollary of the principle that the Patent Law does not look for the
true and first inventor outside the country covered by the grant. It
follows that where there are two rival persons both claiming to be
* See Fletcher Moulton on Patents p. 212 who cites also Avery's Patent
(supra) ; Jackson’s Patent (1905) 22, B.P.C. 334, at p. 387 ; Mark’s Patent (1908)
25. R.P.C. 553. See also Jameson’s Patent (1902) 19. R P.C. 246 ; c/’s Scott’s
Patent (1903) 20. R.P.0. 257.
Cb. VII]
THE OBJECTION OF OBTAINING
263
the true aud first inventor of an invention in respect of British
India the Indian Patent Law treats as immaterial any transactions
which may have taken place between these two rivals outside British
India, no matter whether those transactions may have been fraudu-
lent or not. *
Questions of the rights in personam between the individuals
concerned whether for breach of contract or for equitable relief are
of course totally different questions which do not affect the validity
of the grant . 8
The objection of “obtaining” :
It is provided under Section 9(lX«) that,
“Any person may, on payment of the prescribed fee, at any
time within (four) months from the date of the advertise-
ment of the acceptance of an application, give notice at
the Patent Office of opposition to the grant of the
patent on any of the following grounds, namely : —
(a) that the applicant obtained the invention from him,
or from a person of whom he is the legal repre-
sentative or assign ;
. Such an objection is for brevity ordinarily known as an objec-
tion on the ground of “obtaining”. Since if the objection is taken
successfully, the grant of a patent will be refused to the Applicant,
it here becomes advisable when considering what are the valid
requisites of a good patent not to overlook the point that the Patent
(or the mode of application for the Patent) must be such as to be
free from any objection on the ground that the Applicant “obtained”
the Patent from another person.
The objection of “obtaining” : apart from fraud.
Since it can seldom happen that A will obtain a patent from B
against B’s wishes and take out a patent in his own name without
doing so fraudulently, it will be found in practice that cases invol-
ving an objection on the ground of “obtaining” under Section 9(1 Xd)
4 Bee Avery's Patent (1887) 4. R.P.C. 152 at p. 164 and 322 (G.A.). See
also Meurs Oerkin’s Application (1910) 27. R.P,C. 565 ; Cur wen’s Application
(1913) 30. R.P.C. 128 ; 29. R.P.C.App.A. Halsey's Application (1914) 31. R.P.C.
101 .
‘See Fletcher Moulton p. 74 note (q) and (r) and see the cases cited at
p. 256 ante, note No. 14.)
264 THE LAW OF PATENTS IN INDIA [Ch. VH
of the Indian act will almost inevitably involve facts constituting
fraud. Yet as already observed it is not in any respect a necessity
under the Act for success in opposition proceedings on this ground
to show any fraud at all. If the applicant can show he was himself
the true and first inventor, this is enough to dispose of an
alleged objection on the ground of obtaining. To show there was
an obtaining by the Applicant from the opponent involves therefore
the showing that the Applicant was not the true and first inventor
himself.
It follows that under the provisions of Section 9(i)(a) of the
Indian Act, which corresponds as already noted to Section ll(lXa)
of the English Act, all that is necessary to be shown to make good
an objection in opposition proceedings is : (1) that the Applicant
for Patent was not the true and first inventor and (2) that the
Applicant obtained the invention from the opponent.
The statutory objection of “obtaining”, which even without
fraud, as already observed, is a ground upon which the grant of a
Patent can be successfully opposed under Section 9 (Ufa) is merely a
specific instance of the negation of one of the wider requisites of a
valid Patent which have been already previously considered : viz.
that the applicant was not the true and first inventor.
It is nevertheless convenient here to note briefly the nature of
acts or conduct which may amount to “obtaining” . within the
meaning of Section 9(lXa) ; that is to say irrespective of fraud.
Fraud immaterial.
The case of In the Matter of an Application for a Patent by
I. Q. Perrett and the observations of the Assistant Comptroller in
that case are in themselves sufficient authority for the clear proposi-
tion that, in regard to objections for “obtaining” simply, the presence
or absence of fraud is immaterial : when he said in the course of his
ruling on the opposition proceedings 6 : —
“That “obtaining” does not necessarily imply fraud, has been
repeatedly held. (See for example, Ruling 1920 (A) in the Appendix
to Volume 27 of the Reports of the Patent Cases).” 7
• (1932) 49. E.P.C. 406 at p.406.
' See also QriffUn’a Application (1889) 6. R. P. 0. 296 ; and 27. R. P. C.
App. (i).
Ch. m] IDENTITY OF INVENTION 265
Knowledge is material.
Ifc is necessary however that the applicant for Patent or an
agent of his must be fixed with the knowledge that the invention
came from the opponent. 8
Acts which may have taken place outside British India are
immaterial.
Clearly if the Applicant for Patent is himself the True and
First Inventor, it cannot be said that he “obtained” the invention
from anyone else. As already previously observed the Applicant may
be the True and First Inventor for all purposes of the Indian Patent
Law even though he obtained knowledge of the invention from some
other person abroad and imported the invention into India. It
follows therefore that whatever events may have occurred outside
British India, these are immaterial and can in no way assist in
establishing an objection on the ground of “obtaining” under Section
9(l)(a) of the Indian Act. The “obtaining” there referred to must
therefore be restricted in meaning to an “obtaining” within British
India.
This principle has been held under English Law to apply also
to Convention Applications. 9
Identity of the Applicant’s invention with what is alleged to have
been obtained.
In oppositions on this ground of “obtaining” the issue most
commonly in dispute in practice is whether or not the invention
described in the Specification of the Applicant for Patent is the
same as what is alleged to have been obtained from the opponent.
For an objection to succeed, it is, of course, essential to establish
identity or at least sufficient similarity. 10
8 See Fletcher Moulton p. 265 : who cites also Edmund's Application
(1886) Griff 282.
0 Compare Fletcher Moulton p. 265 citing inter alia the following cases :
Edmund's Application (1886) Griff 281 ; Spiel's Application (1888) 5. R. P. C. 281 ;
Lake' 8 Application (1888) 5 R. P .C. 415 ; Higgins Application (1892) 9. R. P. C.
74 ; McNeil's Application (1907) 24. R. P. C. 680 ; 1912, A. ; and, regarding
convention applications, Meurs-Ger kin's Application (1910) 27. R. P. C. 565.
lo See Ashton <Sb Knowle's Application ( 1910)27. R. P. C. 181; Matey &
Taunton's Application (1932) 49. R. P. 0. 47 ; Fletcher Moulton p. 266 ; Terrell
(8th Edn.) p. 190.
84
266 THE LAW OF PATENTS IN INDIA [Ch. VII
Where more than one person has assisted in work resulting in the
invention.
The issue of "obtaining” also frequently arises in opposition
proceedings in cases where it is the work, manual or mental, of
more than one person from which the invention in its final form has
originated. Such principles as have been laid down in the English
decisions in such cases have already been mentioned in connection
with the meaning of the true and first inventor 11 .
At what stages objections for fraud may be raised in British India.
It is submitted that if the objection relates to conscious and
deliberate fraud, such as to amount to a deceit on the Crown, such
an objection, though nowhere mentioned in the Act, could be raised
by virtue of general principles of law at any stage : either as an
objection by the Patent Office before acceptance of the application :
or in Opposition Proceedings before the Controller : or on a Petition
to Court for revocation : or in an Infringement suit as a defence.
Regarding specific statutory grounds relating to fraud in some
shape or other, the position appears to be as follows : —
(i) As to objections by the Patent Office before acceptance of
the application.
No ground based on fraud is mentioned in Section 5 which
relates to the search to be made by the Patent Office at this stage.
And from the nature of things objections for fraud are not taken,
ordinarily, by the Patent Office at this stage.
(ii) In opposition proceedings before the Controller : —
No ground based on fraud is among those made available
under Section 9. In practice however circumstances involving
fraud may be relied on as a ground in connection with other objec-
tions either of “obtaining” [under Section 9(l)(a)] or of insufficiency
[under Section 9(lXc).]
(iii) On a Petition to Court for revocation : —
Fraud is expressly mentioned as a ground under Seotion 26(lXe)
and Section 24(l)(f).
(iv) In an infringement suit as a defence : — »
The Defendant’s position is the same as that of a Petitioner in
a Petition for Revocation : by virtue of Section 29(2).
1 1 See page 253 ante.
Ch. VII] AT WHAT STAGES OBJECTIONS MAY BE RAISED
267
At. what stages an objection for “obtaining" may be raised in
British India : —
(i) As to objections by the Patent Office before acceptance of
the application : —
The objection cannot be raised at this stage.
(ii) In opposition proceedings before the Controller : —
The objection of obtaining is expressly allowed to be raised as
a ground under Section 9(lXa).
(iii) On a Petition to Court for revocation : —
The objection (though commonly relied upon in the United
Kingdom under the English Act) finds no mention among the grounds
stated under Section 26 of the Indian Act. It is not therefore, it
would appear, available as a ground for revocation. In many cases
the circumstances desired to be relied on may be equally well relied
on as an objection relating to “true and first inventor" under Section
26(1 )(c).
(iv) In an infringement suit as a defence : —
The position of a Defendant is the same as that above stated for
a Petitioner in a Petition for revocation : by virtue of Section 29(2).
CHAPTER VIII
FURTHER REQUISITES OF A VALID AND EFFECTIVE
PATENT IN REGARD TO THE MANAGEMENT OF
THE PATENT AFTER GRANT— OBLIGATIONS
NOT TO ABUSE THE MONOPOLY— OBLIGA-
TIONS FOR ADEQUATE .WORKING AND
SUPPLY— OBLIGATIONS AS TO
MANUFACTURE IN
BRITISH INDIA
It is next proposed to consider the requisite obligations which
a patentee must fulfil in the management of his patent after grant.
In order to retain his patent valid and effective he has certain
obligations to the public in regard to working the patent and in
regard to supplying the demand of the public for the patented
article» which should not be lost sight of when considering what are
the requisites of a valid patent. In order that the benefit of a patent
may not be lost either wholly or partially it is equally essential for
these requisites for working and supply and manufacture in British
India to be fulfilled after grant as it is for the other requisites which
have already been considered in the preceding two chapters to be
fulfilled in what may be termed the earlier stages of the life of the
patent.
These obligations are now regulated both in England and in
India by Statute in the current Patent Acts.
Previous English Law.
Under the Statute of Monopolies (see Section 6) it was ex-
pressly provided that a patent was void if “contrary to Law or
mischievous to the state by raising prices of commodities at home
or hurt of trade or generally inconvenient’*. It appears that in fact
many patents were revoked during the seventeenth century under
the Statute of Monopolies alone. 1
See Terrell 8th edn. p. 323 citing Hulme.
Ch. vm]
MANAGEMENT OF PATENT AFTER GRANT
269
It is abundantly clear also that the early patents were granted
with a view to assisting the grantees to establish new industries in
England. This being the basis of the grant it was clearly within
the power of the Crown, even without any special further statutory
provisions for the purpose, to revoke grants if through neglect by
the grantee of his obligations this object was not fulfilled ; in such
cases the grantee would not have fulfilled the conditions of the
graut.
The following observations of Parker J. in the case of Ilats-
chek’s Patents 2 (when considering the effect of Section 27 of the
English Act of 1907) also support this view : viz : —
“The mischiefs aimed at by the Section arose to a great extent,
at any rate, from the patentee exercising his exclusive right of sale
without exercising his exclusive right of manufacture, contentiug
himself with preventing manufacture by others in this country and
importing articles manufactured abroad. The Statute of Monopolies
reserves only the right of the Crown to grant for 14 years the sole
right of working or making the invention and says nothing about the
sole right of sale. The Crown has, however, always granted by
virtue of this reservation, the sole right of sale as well as the sole
right of working and making. This has been held to be justified on
the ground that the sole right of sale is an ancillary right to the
sole right of manufacture, and it might possibly at one time have
been open to the Courts to refuse to protect the solo right of sale
unless exercised as an aid to the sole right of manufacture in this
country. The form of Letters Patent granted by the Crown has,
however invariably so far as I can discover, contained a clause
providing that if at any time during the term of the Patent it should
be made to appear to the King or any six or more members of his
Privy Council, that the grant was prejudicial or inconvenient to the
King’s subjects, the Letters Patent should be void. There is an
instance of this clause in a Patent granted in 1618, several years
before the Statute of Monopolies and cited in the case of the
Attorney- General v. Simpson (1901, 2 Chancery, at pages 675 and
676), and it appears from that case that the Privy Council enter-
tained jurisdiction under the clause to regulate charges made by the
(1909) 26. R.P.C. land 228 at p.244; or 1909. 2. Ch. 68 at p. 9a
270 THE LAW OF PATENTS IN INDIA [Ch. Tin
Patentee. (See the same oase in the House of Lords, 1904 Appeal
Cases, at page 483). In my opinion, Letters Patent have always been
voidable under this clause if worked by the patents to the prejudice
or inconvenience of the King’s subjects in general, and but for the
fact that the jurisdiction of the Privy Council under this clause has
fallen into disuse, a patentee by abusing his monopoly would always
have incurred the risk of losing his patent rights.”
It appears also that many early patents were in fact revoked
on the ground of non-manufacture in England : on the principle
that this was an abuse of the monopoly.
Later however it appears to have been decided that actual
manufacture in England was not obligatory ; provided that the
demand in England was properly met. 3
Though even in former days, if a patentee abused his monopoly
rights, there would have been ample inherent power in the Crown
to insist on the issue of compulsory licenses, yet in fact there was
no machinery to regulate the issue of such licenses ; nor were they
in practice issued.
The first Statute to regulate these matters was the English
Act of 1883.
English Law in 1883.
The material provisions of the English Act of 1883 were as
follows : —
By section 22 : —
“If on the petition of any person interested it is proved to the
Board of Trade that by reason of the default of a patentee to grant
licenses on reasonable terms —
(а) The patent is not being worked in the United
Kingdom ; or
(б) The reasonable requirements of the public with respect
to the invention cannot be supplied ; or
(c) Any person is prevented from working or using to the
best advantage an invention of which he is possessed ;
the Board may order the patentee to grant licenses on such terms as
*. Bee Badisehe Anilin und Soda Fabriek ▼. W. 0. Thompson Ltd. etc. (1004)
21. B. P.0.473.
Ch. vm] PREVIOUS ENGLISH LAW 271
to the amount of royalties, security for payment or otherwise, as
the board, having regard to the nature of the invention and the
circumstances of the case, may deem just, and any such order may be
enforced by mandamus.”
English Law in 1902.
The material provisions of the English Patents Act of 1902
were as follows :
By Section 3 :
3. Section twenty-two of the principal Act (relating to the
grant of compulsory licences by the Board of Trade) is hereby
repealed and the following provisions shall be substituted
therefore : —
(1) Any person interested may present a petition to the Board
of Trade alleging that the reasonable requirements of the public with
respect to a patented invention have not been satisfied, and praying
for the grant of a compulsory licence, or, in the alternative, for the
revocation of the patent ;
(2) Where any such petition is referred by the Board of
Trade to the Judicial Committee, and it is proved to the satisfaction
of the Judicial Committee that the reasonable requirements of the
public with reference to the patented invention have not been
satisfied, the patentee may be ordered by an Order in Council to
grant licences on such terms as the said Committee may think just,
or, if the Judicial Committee are of opinion that the reasonable
requirements of the public will not be satisfied by the grant of
licences, the patent may be revoked by Order in Council ;
Provided that no order of revocation shall be made before the
expiration of three years from the date of the patent, or if the
patentee gives satisfactory reasons for his default ;
(4) On the hearing of any petition under this section, the
patentee and any person claiming an interest in the patent as ex-
clusive licensee, or otherwise, shall be made parties to the proceedings,
and the law officer, or such other counsel as he may appoint, shall
be entitled to appear and be heard ;
(5) If it is proved to the satisfaction of the Judicial Com-
mittee that the patent is worked, or that the patented article is
272
THE LAW OF PATENTS IN INDIA
[Ch. vra
manufactured, exclusively or mainly outside the United Kingdom,
then, unless the patentee can show that the reasonable requirements
of the public have been satisfied, the petitioner shall be entitled
either to an order for a compulsory license or, subject to the above
proviso, to an order for the revocation of the patent ;
(6) For the purposes of this section the reasonable require*
ments of the public shall not be deemed to have been satisfied if, by
reason of the default of the patentee to work his patent, or manu-
facture the patented article in the United Kingdom to an adequate
extent, or to grant licences on reasonable terms (a) any existing
industry is unfairly prejudiced, or (b) the demand for the patented
article is not reasonably met ;
(7) An Order in Council directing the grant of any licence
under this section shall, without prejudice to any other method of
enforcement, operate as if it were embodied in a deed granting a
licence and made between the parties to the proceeding ;
(8) His Majesty in Council may make rules of procedure and
practice for regulating proceedings before the Judicial Committee
under this section, and, subject thereto, such proceedings shall be
regulated according to the existing procedure and practice in patent
matters. Any Order in Council, or any order made by the Judicial
Committee under this Act, may be enforced by the High Court as if
it were an order of the High Court ;
(9) The costs of and incidental to all proceedings under this
section shall be in the discretion of the Judicial Committee, but, in
awarding costs on any application for the grant of a licence, the
Judicial Committee may have regard to any previous request for, or
offer of, a licence made either before or after the application to the
Committee :
(10) For the purposes of this .section, three members of the
Judicial Committee shall constitute a quorum ;
(11) This section shall apply to patents granted before, as well
as after, the commencement of this Act/’
English Law : in 1907.
The material provisions of the English Act of 1907 were as
Oh. VOL]
ENGLISH LAW IN 1907
m
follows : —
By Section 24 :
“(]) Any person interested may present a petition to the
Board of Trade alleging that the reasonable requirements of the
public with respect to a patented invention have not been satisfied,
and praying for the grant of a compulsory licence, or in the alter-
native, for the revocation of the patent.
(2) The Board of Trade shall consider the petition, and if the
parties do not come to an arrangement between themselves, the Board
of Trade, if satisfied that a prima facie case has been made out,
shall refer the petition to the court, and, if the Board are not so
satisfied, they may dismiss the petition.
(3) Where any such petition is referred by the Board of
Trade to the court, and it is proved to the satisfaction of the court
that the reasonable requirements of the public with reference to the
patented invention have not been satisfied, the patentee may be
ordered by the court to grant licences on such terms as the court
may think just, or, if the court is of opinion that the reasonable
requirements of the public will not be satisfied by the grant of
licences, the patent may be revoked by order of the court :
Provided that an order of revocation shall not be made before
the expiration of three years from the date of the patent, or if the
patentee gives satisfactory reasons for his default.
(4) On the hearing of any petition under this section the
patentee and any person claiming an interest in the patent as inclu-
sive licensee or otherwise, shall be made parties to the proceeding,
and the law officer or such other counsel as he may appoint shall be
entitled to appear and be heard.
(5) For the purposes of this section the reasonable require-
ments of the public shall not be deemed to have been satisfied —
(a) If by reason of the default by the patentee to manu-
facture to an adequate extent and supply on reasonable
terms the patented artiole, or any parts thereof which
are necessary for its efficient working or to carry on
the patented process to an adequate extent or to grant
licences on reasonable terms, any existing trade or
industry, or the establishment of any new trade or
industry in the United Kingdom is unfairly prejudiced,
35
274;
THE LAW OF PATENTS IN INDIA
[Ch. VIII
or the demand for the patented article or the article
produced by the patented process is not reasonably
met ; or
(b) It any trade or industry in the United Kingdom is
unfairly prejudiced by the conditions attached by the
patentee before or after the passing of this Act to the
purchase, hire, or use of the patented article or to the
using or working of the patented process.
(6) An order of the Court directing the grant of any licence
under this section shall, without prejudice to any other method of
enforcement, operate as if it were embodied in a deed granting a
licence and made between the parties to the proceeding.
By Section 27 : —
(1) At any time not less than four years after the date of a
patent and not less than one year after the passing of this Act, any
person may apply to the Comptroller for the revocation of the
patent on the ground that the patented article or process is manu-
factured or carried on exclusively or mainly outside the United
Kingdom.
(2) The Comptroller shall consider the application, and if
after enquiry he is satisfied that the allegations contained therein
are correct, then, subject to the provisions of this section, and unless
the patentee proves that the patented article or process is manu-
factured or carried on to an adequate extent in the United Kingdom
or gives satisfactory reasons why the article or process is not so
manufactured or carried on, the Comptroller may make an order
revoking the patent either —
(a) forthwith ; or
(b) after such reasonable interval as may be specified in
the order, unless in the meantime it is shown to his
satisfaction that the patented article or process is
manufactured or carried on within the United Kingdom,
to an adequate extent :
Provided that no such order shall be made which is at vari-
ance with any treaty, convention, arrangement, or engagement with
any foreign country or British possession.
(3) If within the time limited in the order the patented artiole
Ch. VIII.]
ENGLISH LAW IN 1919
275
or-process is not manufactured or carried on within the United
Kingdom to an adequate extent, but the patentee gives satisfactory
reasons why it is not so manufactured, or carried on, the Comp-
troller may extend the period mentioned in the previous order for
such period not exceeding twelve months as may be specified in the
subsequent order.
(4) Any decision of the Comptroller under this section shall
be subject to appeal to the Court, and on any such appeal the Law
Officer or such other Counsel as he may appoint shall be entitled to
appear and be heard.”
English Law in 1919.
The material provisions of the English Act of 1919, which
repealed both Section 24 and Section 27 of the Act of 1907 and
enacted a new section 27 were as follows : —
“1. For section twenty-seven of the Patents and Designs Act,
1907 (hereinafter referred to as the principal Act), the following
section shall be substituted.
“27.(1) Any person interested may at any time apply to the
Comptroller alleging in the case of any patent that there haB been
an abuse of the monopoly rights thereunder and asking for relief
under this section.
(2) The monopoly rights under a patent shall be deemed to
have been abused in any of the following circumstances : —
(a) If at any time after the expiration of four years from
the date of the patent, the patented invention (being
one oapable of being worked in the United Kingdom),
is not being worked within the United Kingdom on a
commercial scale, and no satisfactory reason can be
given for such non-working :
Provided that, if an application is presented to the Comptroller
on this ground, and the Comptroller is of opinion that the time
which has elapsed since the date of the patent has by reason of the
nature of the invention or for any other cause been insufficient to
enable the invention to be worked within the United Kingdom on a
commercial scale, the Comptroller may adjourn the application for
suoh period as will in his opinion be sufficient for that purpose :
276 THE LAW OF PATENTS IN INDIA [Ch. VIA
(b) If the working of the invention within the United
Kingdom on a commercial scale is being prevented or
hindered by the importation from abroad of the patented
article by the patentee or persons claiming under him,
or by persons directly or indirectly purchasing from
him, or by other persons against whom the patentee is
not taking or has not taken any • proceedings for in-
fringement :
(c) If the demand for the patented article in the United
Kingdom is not being met to an adequate extent and on
reasonable terms :
(d) If, by reason of the refusal of the patentee to grant a
licence or licences upon reasonable terms, the trade or
industry of the United Kingdom or the trade of any
person or class of persons trading in the United Kingdom,
or the establishment of any new trade or industry in
the United Kingdom, is prejudiced, and it is in the
public interest that a licence or licences should be
granted :
(e) If any trade or industry in the United Kingdom, or any
person or class of persons engaged therein, is unfairly
prejudiced by the conditions attached by the patentee
whether before or after the passing of this Act, to the
purchase, hire, licence, or use of the patented article,
or to the using or working of the patented process :
Provided that, for the purpose of determining whether there
has been any abuse of the monopoly rights under a patent, it shall
be taken that patents for new inventions are granted not only to
encourage inventions but to secure that new inventions shall so far
as possible be worked on a commercial scale in the United Kingdom
without undue delay.
(3) On being satisfied that a case of abuse of the monopoly
rights under a patent has been established the Comptroller may
exercise any of the following powers as he may deem expedient in
the circumstances : —
(a) He may order the patent to be indorsed with the words
“licences of right” and thereupon the same rules shall
CluVIll.] PROVISIONS OF THE STATUTE 277
apply as are provided in this Aot in respect of patents
so indorsed, and an exercise by the Comptroller of this
power shall entitle every existing licensee to apply to
the Comptroller for an order entitling him to surrender
his licence in exohange for a licence to be settled by the
Comptroller in like manner as if the patent had been so
indorsed at the request of the patentee, and the Comp-
troller may make such order ; and an order that a
patent be so indorsed may be made notwithstanding that
there may be an agreement subsisting which would
have precluded the indorsement of the patent at the
request of the patentee :
(bl He may order the grant to the applicant of a licence on
such terms as the Comptroller may think expedient,
including a term precluding the licensee from importing
into the United Kingdom any goods the importation of
which, if made by persons other than the patentee or
persons claiming under him, would be an infringement
of the patent and in such case the patentee and all
licensees for the time being shall be deemed to have
mutually covenanted against such importation. A
licensee under this paragraph shall be entitled to call
upon the patentee to take proceedings to prevent
infringement of the patent, and if the patentee refuses,
or neglects to do so within two months after being so
called upon, the licensee may institute proceedings for
infringement in his own name as though he were the
patentee, making the patentee a defendant. A patentee
so added as defendant shall not be liable for any costs
unless ho enters an appearance and takes part in the
proceedings. Service on him may be effected by leaving
the writ at his address for service given on the register :
In settling the terms of a licence under this paragraph
the Comptroller shall be guided as far as may be by the
same considerations as are specified in section twenty-
four of this Act for his guidance in settling licenoes
under that section :
(c) If the Comptroller is satisfied that the invention is not
278 THE LAW OF PATENTS IN INDIA [Ch. VIII
being worked on a commercial scale within the United
Kingdom, and is such that it cannot be so worked
without the expenditure of oapital for the raising of
which it will be neoessary to rely on the patent mono-
poly, he may, unless the patentee or those claiming under
him will undertake to find such capital order the grant
to the applicant, or any other person, or to the applicant
and any other person or persons jointly, if able and
willing to provide such capital of an exclusive licence
on such terms as the Comptroller may think just, but
subject as hereinafter provided :
(d) If the Comptroller is satisfied that the objects of this
section cannot be attained by the exercise of any of the
foregoing powers, he may order the patent to be revoked,
either forthwith or after such reasonable interval as may
be specified in the order, unless in the meantime such
conditions as may be prescribed in the order with a
view to attaining the objects of this section are fulfilled,
and the Comptroller may on reasonable cause shown in
any case, by subsequent order extend the interval so
specified :
Provided that the Comptroller shall make no order for
revocation which is at variance with any treaty, conven-
tion, arrangement, or engagement with any foreign
country or British possession :
(e) If the Comptroller is of opinion that the objects of this
section will be best attained by making no order under
the above provisions of this section, he may make an
order refusing the application and dispose of any ques-
tion as to oosts thereon as he thinks just.
(4) In settling the terms of any such exclusive licence as is
provided in paragraph (c) of the last preceding subsection, due
regard shall be had to the risks undertaken by the licensee in provid-
ing the capital and working the invention, but, subject thereto, the
licence shall be so framed as s-r-
(a) To secure to the patentee the maximum royalty compa-
tible with the licensee working the invention within the
Ch. VIII.] EXCLUSIVE LICENSES 279
United Kingdom on a commercial scale and at a reason*
able profit :
(b) To guarantee to the patentee a minimum yearly sum by.
way of royalty, if and so far as it is reasonable so to do,
having regard to the capital requisite for the proper
working of the invention and all the circumstances of
the case ;
and, in addition to any other powers expressed in the licence or
order, the licence and the order granting the licence Bhall be made
revocable at the discretion of the Comptroller if the licensee fails to
expend the amount specified in the licence as being the amount which
he is able and willing to provide for the purpose of working the
invention on a commercial scale within the United Kingdom, or if
he fails so to work the invention within the time specified in the
order.
(5) In deciding to whom such an exclusive licence is to be
granted, the Comptroller shall unless good reason is shown to the
contrary, prefer an existing licensee to a person having no registered
interest in the patent.
(6) The order granting an exclusive licence under this section
shall operate to take away from the patentee any right which he may
have as patentee to work or use the invention and to revoke all
existing licences, unless otherwise provided in the order, but on
granting an exclusive licence the Comptroller may, if he thinks it
fair and equitable, make it a condition that the licensee shall give
proper compensation to be fixed by the Comptroller for any money
or labour expended by the patentee or any existing licensee in
developing or exploiting the invention.
(7) Every application presented to the Comptroller under this
section must set out fully the nature of the applicant’s interest and
the facts upon which the applicant bases his case and the relief
which he seeks. The application must be aocompanied by statutory
declarations verifying the applicant’s interest and the facts set out
in the application.
(8) The Comptroller shall consider the matters alleged in the
application and declarations, and, if satisfied that the applicant has
a bona fide interest and that a prima facie case for relief has been
made out, he shall direot the applicant to serve copies of the appli-
280
THE LAW OF PATENTS IN INDIA
[Ch/vm
cation and declarations upon the patentee and upon any other
persons appearing from the register to be interested in the patent
and shall advertise the application in the illustrated Official Journal
(Patents).
(9) If the patentee or any person is desirous of opposing the
granting of any relief under this section, he shall, within such time
as may be prescribed or within such extended time as the Comp-
troller may on application further allow, deliver to the Comptroller
a counter statement verified by a statutory declaration fully setting
out the grounds on which the application is to be opposed.
(10) The Comptroller shall consider the counter statement
and declarations in support thereof and may thereunder dismiss the
application if satisfied that the allegations in the application have
been adequately answered, unless any of the parties demands a
hearing or unless the Comptroller himself appoints a hearing. In
any case the Comptroller may require the attendance before him of
any of the declarants to be cross-examined or further examined upon
matters relevant to the issues raised in the application and counter
statement, and he may, subject' to due precautions against disclosure
of information to rivals in trade, require the production before him
of books and documents relating to the matter in issue.
(11) All orders of the Comptroller under this section shall be
subject to appeal to the Court, and ort any such appeal the law officer
or such other counsel as he may appoint shall be entitled to appear
and be heard.
(12) In any case where the Comptroller does not dismiss an
application as hereinbefore provided, and
(a) if the parties interested consent, or
(b) if the proceedings require any prolonged examination of
documents or any scientific or local investigation which
cannot in the opinion of the Comptroller conveniently
be made before him ; the Comptroller may at any time
order the whole proceedings or any question or issue
of fact arising thereunder to be referred to an arbitrator
agreed on by the parties, or in default of agreement
appointed by the Comptroller, and, where the whole
proceedings are so referred, the award of such arbitrator
ch. vm]
PROVISIONS FOR LICENSES OF RIGHT
Bhall if all the parties consent, be final, bat otherwise
shall be subject to the same appeal as the decision of
the Comptroller under this section, and, where a question
or issue of fact is so referred, the arbitrator shall report
his findings to the Comptroller.
(13) For the purposes of this section, the expression “patented
article’' includes articles made by a patented process.
By Section 2 : —
“2. For section twenty-four of the principal Act, the following
section shall be substituted : —
“24. (1) At any time after the sealing of a patent the Comp-
troller shall, if the patentee so requests, cause the patent to be
indorsed with the words ‘licences of right’, and a corresponding
entry to be made in the register, and' thereupon —
(a) any person shall at any time thereafter be entitled as of
right to a licence under the patent upon such terms
as, in default of agreement, may be settled by the Comp-
troller on the application of either the patentee or the
applicant :
Provided that any licence the terms of which are settled by
agreement shall be deemed, unless otherwise expressly
provided, to include the terms and conditions specified
in paragraphs (c) and (d) of this subsection as if they
had been imposed by the Comptroller thereunder in.
like manner as if the terms had been settled by the
Comptroller :
(b) in settling the terms of any such licence the Comptroller
shall be guided by the following considerations —
(i) he shall, on the one hand, endeavour to secure the
widest possible user of the invention in the United
Kingdom consistent with the patentee deriving .a
reasonable advantage from his patent rights ;
(it) he shall, on the other hand, endeavour to secure to
the patentee the maximum advantage consistent
with the invention being worked by the licensee at
a reasonable profit in the United Kingdom ;
36
THE LAW OP PATENTS IN INDIA
[Ch. vni
(iii) he shall also endeavour to secilre equality of advan-
■ tage among the several licensees, and for this
purpose may, on due cause being shown, reduce the
royalties or other payments accruing to the patentee
under any licence previously granted.
Provided that, in considering the question of equality of
advantage, the Comptroller shall take into account any
work done or outlay incurred by any previous licensee
with a view to testing the commercial value of the
invention or to securing the working thereof on a
commercial scale in the United Kingdom ;
(c) any such licence the terms of which are settled by the
Comptroller may be so framed as to preclude the licensee
from importing into the United Kingdom any goods the
importation of which, if made by persons other than the
patentee or those claiming under him, would be an
infringement of the patent, and in such a case the
patentee and all licensees under the patent shall be
deemed to have - mutually covenanted against such
importation :
(d) every such licensee shall be entitled to call upon a
patentee to take proceedings to prevent the infringe-
ment of the patent, and if the patentee refuses, or
neglects to do so within two months after being so
called upon, the licensee may institute proceedings
for the infringement in his own name as though he
were patentee, making the patentee a defendant. A
patentee so added as defendant shall not be liable for
any costs unless he enters an appearance and takes
part in the proceedings. Service on him may be effected
by leaving the writ at his address for service given
on the register :
(e) if in any action for infringement of a patent so indorsed
the infringing defendant is ready and willing to take
a licence upon terms to be settled by the comptroller,
no injunction against him shall be awarded, and the
amount recoverable against him by way of damages (if
any} shall not exceed double the amount which would
Ch. vmg ENDOESEMENT OF PATENTS FOE LICENSES OF EIGHT 285
have been recoverable against him as licensee if the
license had been dated prior to the earliest infringe*
ment :
Provided that this paragraph shall not apply where the
infringement consists of the importation of infringing
goods :
(f) the renewal fees payable by the patentee of a patent so
indorsed shall, as from the date of the indorsement, bo
one moiety only of the fees which would otherwise have
been payable.
(2) The Comptroller shall, before acting on any request to
indorse a patent made by the patentee under this section, advertise
such request in the Illustrated Official Journal (Patents) and shall
satisfy himself that the patentee is not precluded by contract from
making such request, and for that purpose shall require from
the patentee such evidence, by statutory declaration or otherwise, as
he may deem necessary :
Provided that a patentee shall not be deemed to be so preclu-
ded by reason only of his having granted a licence under the patent
where the licence does not limit his right to grant other licences.
(3) Any person, alleging that a request under this section has
been made contrary to some contract in which he is interested, may
apply to the Comptroller within the prescribed time and in the
prescribed manner, and tho Comptroller, if satisfied of the truth of
such allegation, shall refuse to indorse the patent pursuant to the
request or shall cause the indorsement, if already made, to be
cancelled.
Any order under this sub-section shall be subject to appeal to
the Court.
(4) All indorsements of patents under this section shall be
entered on the register of patents and shall be published in the
Illustrated Official Journal (Patents), and in such other manner as
to the Comptroller may seem desirable for the purpose of bringing
the invention to the notice of manufacturers.
(5) If at any time it appears that in the case of a patent so
indorsed there is no existing licence the Comptroller may, if he
tVijnka fit, on the application of the patentee and on payment by him
284
THE LAW OF PATENTS IN INDIA
[Ch.vm
of the unpaid moiety of all renewal fees which have become due
since the indorsement, after due notice oancel the indorsement, and
in that case the patentee’s rights and liabilities shall be the same
as if no suoh indorsement had been made.”
By Section 3 : —
“3. After section twenty-seven of the principal Act, the fol-
lowing section shall be inserted : —
“27A. Any order for the grant of a licence under this Act
shall, without prejudice to any other method of enforcement, operate
as if it were embodied in a deed granting a licence executed by the
patentee and all other necessary parties.”
English Law in 1928.
The material provisions of the English Act of 1928 were solely
directed to preventing applications being made except after three
years after grant and were as follows : —
By Section 2 : —
“2. The following amendments shall be made in section
twenty-seven of the principal Act : —
(1) In sub-section (1), after the words “at any time”, there
shall be inserted the words “after the expiration of three
years from the date of the grant of a patent,” and for
the words “any patent” there shall be substituted the
words “that patent” :
(2) In paragraph (a) of sub-seotion (2) the words “at any
time after the expiration of four years from the date of
the patent” shall be omitted, and for the words “the date
of the patent” there shall be substituted the words “the
grant of the patent.”
Present day law in the United Kingdom.
The material provisions of the current English Statute are
contained in Section 27 and Seotion 83 A together with (as to licenses
of right) Section 24 of the Patents & Designs Acts 1907-1932.
The present Section 27 is substantially the same as Section 27 of
the 1919 Act : for convenience of reference however it is here set
out with such passages as differ from the 1919 act in italios. The
present Section 83A is for purposes of patents precisely the same
ch. vm]
PRESENT DAY LAW IN THE U. K.
as .the former Seotion 27 A of the 1919 Act : it has beeu transferred
to a later part of the 8tatute merely for the purpose of making it
applicable also to designs as well as to patents. For convenience
of reference it is also set out here italicised in the same manner.
The present Section 24 (concerning “licenses of right”) is for
convenience of reference also set out here italised in the same manner.
This, together with the observations contained in the earlier part
of this chapter, it is hoped, will enable the evolution in England
of the law regarding the abuse by the patentee of his monopoly to
be traced at a glance up to the present day. The arrangement
adopted in this chapter of setting out the exact wording of previous
English statutory provisions, in sequence, showing the precise nature
of the changes of wording effected, with the relative dates, though
tedious, appears to be necessary for the extent to be appreciated
to which the principles and reasoning of English decisions will be
applicable in India. In many cases it will be seen that such decisions
are based on a wording to be interpreted which is precisely similar
(and in other instances not materially different) in both countries.
Possibly also to some the process of the clarification of the
law in this sphere in England, through the changes noted, may be of
interest for purposes of comparison with the relative sections of the
Act now in force in India.
The following are the sections in point which are in force in
England at the present day : —
“27. (1) Any person interested may at any time after the
expiration of three years from the date of sealing a patent apply to
the Comptroller alleging in the case of that patent that there has
been an abuse of the monopoly rights thereunder and asking for
relief under this seotion.
(2) The monopoly rights under a patent shall be deemed to
have been abused in any of the following circumstances : —
(a) If the patented invention (being one capable of being
worked in the United Kingdom), is not being worked
within the United Kingdom on a commercial scale, and
no satisfactory reason can be given for suoh non-
working :
Provided that, if an application is presented to the Comptrol-
ler on this ground, and the Comptroller is of opinion
THE LAW OF PATENTS IN INDIA [Ck.vm
that the time which has elapsed sinoe the sealing
of the patent has by reason of the nature of the inven-
tion or for any other cause been insufficient to enable
the invention to be worked within the United Kingdom
on a commercial scale, the Comptroller may make an
order adjourning the application for such period as
will in his opinion be sufficient for that purpose.
(b) If the working of the invention within the United
Kingdom on a commercial scale is being prevented or
hindered by the importation from abroad of the patented
article by the patentee or persons claiming under him,
or by persons directly purchasing from him, or by other
persons against whom the patentee is not taking or has
not taken any proceedings for infringement :
(c) If the demand for the patented article in the United
Kingdom is not being met to an adequate extent and on
reasonable terms :
(d) If, by reason of the refusal of the patentee to grant a
licence or licences upon reasonable terms, the trade or
industry of the United Kingdom or the trade of any
person or class of persons trading in the United
Kingdom, or the establishment of any new trade or
industry in the United Kingdom, is prejudiced, and it
is in the public interest that a licence or licences should
be granted :
(e) If any trade or industry in the United Kingdom, or any
person or class of persons engaged therein, is unfairly
prejudiced by the conditions attached by the patentee,
whether before or after the passing of this Act, to the
purchase, hire, licence, or use of the patented article, or
to the using or working of the patented process :
(f ) If it is shown that the existence of the patent , being a
patent for an invention relating to a process involving
the use of materials not protected by the patent or for an
invention relating to a substance pr oduced by such a
process, has been utilised by the patentee so as unfairly
to prejudice in the United Kingdom the manufacture,
use or sale of any such materials :
Ch. vm) STATUTORY GROUNDS OP ABUSE OF MONOPOLY 887
Provided that, for the purpose of determining whether there
has been any abuse of the monopoly rights under a patent, it shall
be taken that patents for new inventions are granted not only to
encourage invention but to secure that new inventions shall so far
as possible be worked on a commercial scale in the United Kingdom
without delay.
(3) On being satisfied that a case of abuse of the monopoly
rights under a patent has been established, the Comptroller may
exercise any of the following powers as he may deem expedient in
the circumstances : —
(a) He may order the patent to be indorsed with the words
“licences of right” and thereupon the same rules shall
apply as are provided in this Act in respect of patents
so indorsed, and an exercise by the Comptroller of this
power shall entitle every existing licensee to apply to
the Comptroller for an order entitling him to surrender
his licence in exchange for a licence to be settled by the
Comptroller in like manner as if the patent had been so
indorsed at the request of the patentee, and the Comp-
troller - may make such order ; and an order that a
patent be so indorsed may be made notwithstanding
that there may be an agreement subsisting which would
have precluded the indorsement of the patent at the
request of the patentee :
(b) He may order the grant to the applicant of a licence on
such terms as the Comptroller may think expedient,
including a term precluding the licensee from importing
into the United Kingdom any goods the importation
of which, if made by persons other than the patentee
or persons claiming under him, would be an infringe-
ment of the patent, and in such case the patentee and
all licensees for the time being shall be deemed to have
mutually covenanted against such importation. A
licensee under this paragraph shall be entitled to call
upon the patentee to take proceedings to prevent in-
fringements of the patent, and if the patentee refuses,
or neglects to do so within two months after being so
called upon, the licensee may institute proceedings for
THE LAW OF PATENTS IN INDIA
[Ch. vra
infringement in his own name as though he were the
patentee, making the patentee a defendant. A patentee
so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the
proceedings. Service . on him may be effected by leaving
the writ at his address for service given on 'the
register :
In settling the terms of a licence under this paragraph the
Comptroller shall be guided as far as may be by the
same considerations as are specified in section twenty-
four of this Act for his guidance in settling licences
under that section :
(c) If the Comptroller is satisfied that the invention is not
being worked on a commercial scale within the United
Kingdom, and is such that it cannot be so worked
without the expenditure of capital for the raising of
which it will be necessary to rely on the patent mono-
poly, he may, unless the patentee or those claiming
under him will undertake to find such capital, order
the grant to the applicant, or any other person, or to
the applicant and any other person or persons jointly,
if able and willing to provide such capital, of an exclu-
sive licence on such terms as the Comptroller may think
just, but subject as hereinafter provided :
(d) Jf the Comptroller is satisfied that the monopoly rights
have been abused in the circumstances specified in para-
graph {f) of the last foregoing subjection, he may order the
grant of licences to the applicant and to such of his
customers and containing such terms as the Comptroller
may think expedient.
(e) If the Comptroller is satisfied that the objects of
this section cannot be attained by the exercise of any
of the foregoing powers, he may order the patent to be
revoked, either forthwith or after such reasonable inter-
val as may be specified in the order, unless in the mean-
time such conditions as may be prescribed in the order
with a view to attaining the objeots of this section are
fulfilled, and the Comptroller may, on reasonable cause
Ch. VIII]
RELIEFS OBTAINABLE
shown in any case, by subsequent order extend the
interval so specified :
Provided that the Comptroller shall take no order for revo-
cation which is at variance with any treaty, convention,
arrangement, or engagement with any foreign country
or part of His Majesty 9 s dominions outside the United
Kingdom :
(f) If the Comptroller is of opinion that the objects of
this section will be best attained by making no order
under the above provisions of this section, he may make
an order refusing the application and dispose of any
question as to costs thereon as he thinks just.
(4) In settling the terms of any such exclusive licence as is
provided in paragraph (c) of the last preceding sub-section, due
regard shall be had to the risks undertaken by the licensee in pro-
viding the capital and working the invention, but subject thereto,
the licence shall be so framed as —
(a) to secure to the patentee the maximum royalty compa-
tible with the licensee working the invention within the
United Kingdom on a commercial scale and at a reason-
able profit ;
(b) to guarantee to the patentee a minimum yearly sum by
way of royalty, if and so far as it is reasonable so to do,
having regard to the capital requisite for the proper
working of the invention and all the circumstances of
the case ;
and, in addition to any other powers expressed in the licence or
order, the licence and the order granting the licence shall be made
revocable at the discretion of the Comptroller if the licensee fails
to expend the amount specified in the licence as being the amount
which he is able and willing to provide for the purpose of working
the invention on a commercial scale within the United Kingdom or
if he fails so to work the invention within the time specified in the
order.
(5) In deciding to whom such an exclusive licence is to be
granted the Comptroller shall, unless good reason is shown to the
37
290
THE LAW OF PATENTS IN INDIA
[Ch. VIII
contrary, prefer an existing licensee to a person having no registered
interest in the patent.
(6) The order granting an exclusive licence under this section
shall operate to take away from the patentee any right which he may
have as patentee to work or use the invention and to revoke all
existing licences, unless otherwise provided in the order, but on
granting an exclusive licence the Comptroller may, if he thinks it
fair and equitable, make it a condition that the licensee shall give
proper compensation to be fixed by the Comptroller for any money
or labour expended by the patentee or any existing licensee in
developing or exploiting the invention.
(7) Every application presented to the Comptroller under this
section must set out fully the nature of the applicant's interest and
the facts upon which the applicant bases his case and the relief
which he seeks. The applications must be accompanied by statutory
declarations verifying the applicant's interest and the facts set out
in the application.
(8) The Comptroller shall consider the matters alleged in the
applications and declarations, and, if satisfied that the applicant
has a bona fide interest and that a prima facie case for relief has
been made out, he shall direct the applicant to serve copies of the
application and declarations upon the patentee and upon any other
persons appearing from the register to be interested in the patent
and shall advertise the application in the Official Journal (Patents).
(9) If the patentee or any person is desirous of opposing the
granting of any relief under this section, he shall within such time
as may be prescribed or within such extended time as the Comp-
troller may on application further allow, deliver to the Comptroller
a counter-statement verified by a statutory declaration fully setting
out the grounds on which the application is to be opposed.
(10) The Comptroller shall consider the counter-statement
and declarations in support thereof and may thereupon dismiss the
application if satisfied that the allegations in the application have
been adequately answered, unless any of the parties demands a
hearing or unless the Comptroller himself appoints a hearing. In
any case the Comptroller may require the attendance before him of
any of the declarants to be cross-examined or further examined upon
Ch. VIII] COMPTROLLER MAY GRANT LICENSES 201
matters relevant to the issues raised in the application and counter
statement, and he may, subject to due precautions against disclosure
of information to rivals in trade, require the production before him
of books and documents relating to the matter in issue.
(11) All orders of the Comptroller under this section shall
be subject to appeal to the Court, and on any such appeal the
Attorney- General or such other counsel as he may appoint shall be
entitled to appear and be heard.
(12) In any case where the Comptroller does not dismiss an
application as hereinbefore provided, and
(a) if the parties interested consent : or
(b) if the proceedings require any prolonged examination
of documents or any scientific or local investigation
which cannot in the opinion of the Comptroller con-
veniently be made before him :
the Comptroller may at any time order the whole proceedings or
any question or issue of fact arising thereunder to be referred to an
arbitrator agreed on by the parties, or in default of agreement
appointed by the Comptroller, and, where the whole proceedings are
so referred, the award of such arbitrator shall, if all the parties
consent, be final, but otherwise shall be subject to the same appeal
as the decision of the Comptroller under this section, and, where a
question or issue of fact is so referred the arbitrator shall report
his findings to the Comptroller.
(L3) For the purposes of this section, the expression “patented
article” includes articles made by a patented process.
Section 83A, which enacts the effect which an order for the
grant of a license shall have in law, is as follows : —
Section 83 A : —
“83A. Any order for the grant of a licence under this Act
shall, without prejudice to any other method of enforcement, operate
as if it were embodied in a deed granting a licence executed by the
patentee (or proprietor of a registered design as the case may he) and
all other necessary parties.
Section 24 which concerns regulations affecting the “licenses
of right” to which reference is made in Section 27 is as follows : —
“24. (I) At any time after the sealing of a patent the Comp-
THE LAW OF PATENTS IN INDIA
[Ch. vrn
troller shall, if the patentee so requests, cause the patent to be
indorsed with the words “licences of right”, and a corresponding
entry to be made in the register, and thereupon —
(a) any person shall at any time thereafter be entitled as
of right to a licence under the patent upon such terms
as, in default of agreement, may be settled by the
Comptroller on the application of either the patentee or
the applicant :
Provided that any licence the terms of which are settled
by agreement shall be deemed, unless otherwise ex-
pressly provided, to include the terms and conditions
specified in paragraphs (c) and (d) of this sub-section as
if they had been imposed by the Comptroller there-
under in like manner as if the terms had been settled
by the Comptroller ;
(b) in settling the terms of any such licence the Comp-
troller shall be guided by the following considerations —
(i) he shall, on the one hand, endeavour to secure the
widest possible user of the invention in the United
Kingdom consistent with the patentee deriving a rea-
sonable advantage from his patent rights ;
(ii) he shall, on the other hand, endeavour to secure to
the patentee the maximum advantage consistent with
the invention being worked by the lioensee at a rea-
sonable profit in the United Kingdom ;
(iii) he shall also endeavour to secure equality of advantage
among the several licensees, and for this purpose may,
on due cause being shown, reduce the royalties or
other payments accruing to the patentee under any
licence previously granted :
Provided that in considering the question of equality of
advantage, the Comptroller shall take into account
any work done or outlay incurred by any previous
licensee with a view to testing the commercial value
of the invention or to securing the working thereof
on a commercial scale in the United Kingdom.
Ch. VIII] PATENTS INDORSED FOR LICENSES OF RIGHT 293
(o) any such licence the terms ot which are settled by the
Comptroller may be so framed as to preclude the licensee
from importing into the United Kingdom any goods the
importation of which, if made by persons other than the
patentee or those claiming under him, would be an
infringement of the patent, and in such case the patentee
and all licensees under the patent shall be deemed to
have mutually covenanted against such importation ;
(d) every such licensee shall be entitled to call upon a
patentee to take proceedings to prevent the infringe*
ment of the patent, and if the patentee refuses, or
neglects to do so within two months after being so
called upon, the licensee may institute proceedings for
the infringement in his own name as though he were
patentee, making the patentee a defendant. A patentee
so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the
proceedings. Service on him may be effected by leaving
the writ at his address for service given on the register ;
(e) if in any action for infringement of a patent so indorsed
the infringing defendant is ready and willing to take
a licence upon terms to be settled by the Comptroller,
no injunction against him shall be awarded and the
amount recoverable against him by way of damages (if
any) shall not exceed double the amount which would
have been recoverable against him as licensee if the
licence had been dated prior to the earliest infringement :
Provided that this paragraph shall not apply where the
infringement consists of the importation of infringing
goods ;
(f) the renewal fees payable by the patentee of a patent so
indorsed shall, as from the date of the indorsement, be
one moiety only of the fees which would otherwise have
been payable.
(2) The Comptroller shall, before acting on any request to
indorse a patent made by the patentee under this section, advertise
such request in the Official Journal (Patents) and shall satisfy
himself that the patentee is not precluded by contract from making
294
THE LAW OF PATENTS IN INDIA
[Ch. vin
such request, and for that purpose shall require from the patentee
such evidence, by statutory declaration or otherwise, as he may
deem necessary :
Provided that a patentee shall not be deemed to be so pre-
cluded by reason only of his having granted a licence under the
patent where the licence does not limit his right to grant other
licences.
(3) Any person, alleging that a request under this section has
been made contrary to some contract in which he is interested, may
apply to the Comptroller within the prescribed time and in the
prescribed manner, and the Comptroller, if satisfied of the truth
of such allegation, shall refuse to indorse the patent pursuant to
the request or shall cause the indorsement if already made, to be
cancelled.
(4) Where a patent of addition is in force any request made
under this section for an indorsement either of the original patent
or of the patent of addition shall be treated as a request for the
indorsement of both patents , and if refused as respects the one shall
be refused as respects the other also , and where a patent of addition
is granted in respect of a patent which is indorsed- under this section
the patent of addition shall also be so indorsed \
(5) All indorsements of patents under this section shall be
entered on the Register of Patents and shall be published in the
Official Journal (Patents), and in such other manner as to the
Comptroller may seem desirable for the purpose of bringing the
invention to the notice of manufacturers.
(6) The Comptroller may, if he thinks fit, on the application
of the patentee and on payment by him of the unpaid moiety of
all renewal fees which have become due since the indorsement, cancel
the indorsement and in that case the patentee’s rights aud liabilities
shall be the same as if no such indorsement had been made.
Provided that before acting on any application for the cancella-
tion of an indorsement , the Comptroller shall advertise the application
in the prescribed manner and shall satisfy himself that there is no
existing licence or that all existing licensees consent to the appli-
cation .
Ch. VIII]
DEVELOPMENT OF THE LAW IN THE U. K.
295
(7) Any person may ivithin the prescribed time and in the
prescribed manner , give notice at the Patent Office of opposition to
an application for the cancellation of an indorsement and where any
such notice is given the Comptroller shall , after giving notice of the
opposition to the applicant and after giving to the applicant and to
the opponent an opportunity of being heard t decide on the case.
(8) Any decision of the Comptroller under this section shall
be subject to an appeal to the Court.
Summary of the history of the law in the United Kingdom :
It is thus seen that there have been the following changing
policies in the United Kingdom : — As to the tribunal empowered to
order the remedies for an abuse by the Patentee of his Monopoly :
in 1883, this was the Board of Trade : in 1902 the Board of Trade
plus the Judicial Committee of the Privy Council : in 1907 the Board
of Trade plus the Court (in respect of section 24), and the Comp-
troller with a right of appeal to the Court (in respect of section 27):
in 1919 the Comptroller with a right of appeal as mentioned in the
Act of 1919 to the Court, and in certain cases with power for the
Comptroller to refer certain matters to arbitration : the act of 1928
did not affect this matter. At the present day : the tribunal is the
same as in 1919.
As to the remedies which that tribunal was given power to
enforce : 1883 the power was restricted to ordering compulsory
licenses : in 1902 the power granted was not restricted to granting
licenses but was extended to revocation : in 1907 these powers were
continued but it is to be noted that whereas under the 1902 Act
both remedies cither of revocation or compulsory licenses were open
in a case of manufacture exclusively or mainly outside the U. K.
under the 1907 Act only the remedy of revocation could be resorted
to in such a case : in 1919 these powers were further extended and
elaborated so as to include : —
(i) compulsory ordinary licenses.
(ii) granting an exclusive licence to the applicant.
(iii) ordering an endorsement of “licenses of right” such
licenses of right being created for the first time by the Act of 1919.
(iv) ordering revocation of the patent, or,
(v) making no order.
THE LAW OF PATENTS IN INDIA
[Ch. VHI
Any one of these various remedies being equally available in a
proper case. The act of 1928 did not affect these matters. At the
present day : the remedies available are the same as in 1919.
As to the grounds on which the remedies could be exercised
these were broadly speaking : —
In 1888 :
(i) reasonable requirements of the public not supplied.
(ii) interference with the working of an invention of a third
party :
(iii) non-working in the United Kingdom.
In 1902 :
(i) reasonable requirements of the public not satisfied (i.e. (a)
an existing or new industry unfairly prejudiced or (b) demand for
patented article not reasonably met.)
(ii) manufacture exclusively or mainly outside the United
Kingdom.
In 1907 :
(i) reasonable requirements of the public not satisfied (i.e. (a)
default of patentee to manufacture adequately or to carry on the
patented process adequatelyor to grant licenses on reasonable terms
so as to result in an existing or new industry being unfairly pre-
judiced or so as to result in demand being not reasonably met, or (b)
any industry being unfairly prejudiced by conditions imposed by the
patentee.)
(ii) manufacture exclusively or mainly outside the United
Kingdom.
In 1919 :
(i) demand not met to an adequate extent or on reasonable
terms.
(ii) existing or new industry of the United Kingdom pre-
judiced by refusal of patentee to grant licenses on reasonable terms.
(iii) existing or new industry of the United Kingdom pre-
judiced by conditions imposed by patentee.
(iv) non-working in the United Kingdom on a commercial
scale.
(v) working in the United Kingdom being hindered by im-
portation from abroad by patentee or his sub-purchasers.
It should be noted that the above grounds were all referred to
under the 1919 Act under the general term of an “abuse of monopoly
Oh. VIII]
PREVIOUS INDIAN LAW
rights” and that the following proviso was expressly made applicable
to all the said grounds : —
“that for the purpose of determining whether there has been any
abuse of the monopoly rights under a patent, it shall be taken that
patents for new inventions are granted not only to encourage inven-
tions but to secure that new inventions shall so far as possible be
worked on a commercial scale in the United Kingdom without undue
delay.”
The 1928 act is not material for the present purpose.
At the present day : the grounds are the same as those stated
above with reference to the Act of 1919 plus the following addi-
tional sixth ground (created by section 27(2)(f) of the present Patent
Act 1907 to 1932)
(vi) Use by the Patentee of the existence of his patent so as
unfairly to prejudice the manufacture, use or sale by a third party of
certain materials not protected by the patent.
Previous Indian Law.
The first statutory provision in British India directly intended
to prevent the abuse of the monopoly by the patentee appears to
have been the Act of 1883, the material provisions of which were as
follows : —
Indian Law ; in 1888.
By Section 43 : —
“43. If on the petition of any person interested it is proved
to the Governor General in Council that, by reason of an inventor
who has acquired an exclusive privilege under this Part failing to
grant licenses on reasonable terms —
(a) the exclusive privilege is not being worked in British
India, or
(b) the reasonable requirements of the public with respect
to the invention cannot be supplied, or
(c) any person is prevented from working or using to the
best advantages ah invention of which he is possessed,
the Governor General in Council may order the inventor to grant
or may himself on behalf of the inventor grant licenses on such
terms as to the amount of royalties, security for payment, or other*
wise, as the Governor General in Council, having regard to the
298 THE LAW OF PATENTS IN INDIA [Ch. VHI
nature of the invention and the circumstances of the oase, may deem
just.”
It is seen that this section of the Indian Act of 1888 is taken
from the English Act of 1883 (see page 270 above) the wording of
Section 22 of which it follows almost verbatim : the only material
differeuce being that the tribunal, in which the power to issue the
compulsory licenses is vested, is, in this case, the Governor General
in Council.
This was directly followed by the Act of 1911. To make the
position in all respects clear, it will be as well to set out here the
material provisions of that Act as originally passed, which were as
follows : —
Indian Law : in 1911.
By Section 22 : —
“22. (1) Any person interested may present a petition to the
Governor General in Council, which shall be left at the Patent
Office, together with the prescribed fee, alleging that the reasonable
requirements of the public with respect to a patented invention have
not been satisfied, and praying for the grant of a compulsory license,
or, in the alternative, for the revocation of the patent.
(2) The Governor General in Council shall consider the peti-
tion, and if the parties do not -come to an arrangement between
themselves, the Governor General in Council may, as he thinks fit,
either dispose of the petition himself or refer it to a High Court for
decision.
(3) The provisions of sub-section (4) of section 15, prescribing
the procedure to be followed in the case of references to the Court
under that section, shall apply in the case of references made to the
Court under this section.
(4) If the Governor General in Council is of opinion, or where
a reference has been made under sub-section (2) to a High Court,
that Court finds, that the reasonable requirements of the public
with reference to the patented invention have not been satisfied, the
patentee may be ordered to grant licenses on such terms as the
Governor General in Council or the High Court as the case may be,
may think just, or if the Governor General in Council or the High
Court is of opinion that the reasonable requirements of the public
Ch. vin ]
INDIAN LAW IN 1911
will not be satisfied by the grant of licenses, the patent may be
revoked by order of the Governor General in Council or the High
Court :
Provided that an order of revocation shall not be made before
the expiration of four years from the date of the patent, or if the
patentee gives satisfactory reasons for his default.
(5) For the purposes of this section the reasonable require-
ments of the public shall not bo deemed to have been satisfied —
(a) if by reason of the default of the patentee to manufac-
ture to an adequate extent and supply on reasonable
terms the patented article, or any parts thereof which
are necessary for its efficient working, or to carry on
the patented process to an adequate extent or to grant
licenses on reasonable terms, any existing trade or
industry or the establishment of any new trade or in-
dustry in British India is unfairly prejudiced, or the
demand for the patented article or the articles produced
by the patented process is not reasonably met ; or
(b) if any trade or industry in British India is unfairly
prejudiced by the conditions attached by the patentee
before or after the commencement of this Act to the
purchase, hire or use of the patented articles or to the
using or working of the patented process.
(6) An order of the Governor General in Council or of the
High Court directing the grant of any license under this section
Bhall, without prejudice to any other method of enforcement, operate
as if it were embodied in a deed granting a license and made bet-
ween the parties to the proceeding.
By Section 23 : —
“23. (1) At any time not less than four years after the date of
a patent granted under this Act, any person may apply to the
Governor General in Council for the revocation of the patent on the
ground that the patented article or process is manufactured or
carried on exclusively or mainly outside British India.
(2) The Governor General in Council shall consider the appli-
cation and, if after inquiry, he is satisfied —
(a) that the allegations contained therein are correct ; and
THE LAW OF PATENTS IN INDIA
[cm. vra
300
(b) that the applicant is prepared, and is in a position to
manufacture or carry on the patented article or pro*
cess in British India ; and
(c) that the patentee refuses to grant a license on reason-
able terms ;
then, subject to the provisions of this section, and unless the patentee
proves that the patented article or process is manufactured or
carried on to an adequate extent in British India, or gives satis-
factory reasons why the article or process is not so manufactured
or carried on, the Governor General in Council may make an order
revoking the patent either —
(i) forthwith ; or
(ii) after such reasonable interval as may be specified in
the order, unless in the meantime it is shown to his
satisfaction that the patented article or process is manu-
factured or carried on within British India to an ade-
quate extent.
(3) No order revoking a patent shall be made under the last
sub-section which is at variance with any treaty, convention
arrangement or engagement with any foreign country or British
possession.
(4) The Governor General in Council may, on the application
of the patentee, extend the time limited in any order made under
sub'Section (2), clause (ii), for such period not exceeding two years
as he may specify in a subsequent order, or revoke any order made
under sub-section (2), clause (ii) or any subsequent order if sufficient
cause is in his opinion shown by the patentee.”
These provisions of the Indian Act of 1911 followed closely
those of the English Act of 1907.
Present day law in British India.
The material provisions of the current Indian Act are contained
in Sections 22, 23 <& 23A of the Act of 1911 as amended by the Act
of 1930. For convenience of reference these are set out here in full
with those passages which differ from the 1911 Act in italics: viz : —
Section 22 : —
“32. (1) Any person interested may present a petition to the
ch. vnij
PRESENT INDIAN LAW
901
Governor General in Council which shall be left at the Patent Office
together with the prescribed fee, alleging that the demand for a
patented article in British India is not being met to an adequate
extent and on reasonable terms and praying for the grant of a
compulsory license! or, in the alternative, for the revocation of the
patent.
(2) The Governor General in Council shall consider the
petition and if the parties do not come to an arrangement between
themselves the Governor General in Council may, as he thinks fit,
either dispose of the petition himself or refer it to a High Court for
decision.
(3) The provisions of sub-section (4) of section 15, prescribing
the procedure to be followed in the case of references to the Court
under that section, shall apply in the case of references made to the
Court under this section.
(4) If the Governor General in Council is of opinion, or, where
a reference has been made under sub-section (2) to a High Court,
that Court finds, that the demand for the patented article in British
India is not being met to an adequate extent and on reasonable terms
the patentee may be ordered to grant licenses on such terms as the
Governor General in Council or the High Court, as the case may be,
may think just, or, if the Governor General in Council or the High
Court is of opinion that the demand will not be adequately met by
the grant of licenses, the patent may be revoked by order of the
Governor General in Council or the High Court ;
Provided that an order of revocation shall not be made before
the expiration of four years from the date of the patent, or if the
patentee gives satisfactory reasons for his default.
(5) For the purposes of this section the demand for a patented
article shall not be deemed to have been met to an adequate extent and
on reasonable terms : —
(a) if by reason of the default of the patentee to manufacture
to an adequate extent and supply on reasonable terms
the patented article, or any parts thereof which are
necessary for its efficient working, or to carry on the
patented prooess to an adequate extent or to grant
lioenses on reasonable terms, any existing trade or
302
THE LAW OF PATENTS IN INDIA
[Ch. vni
industry or the establishment of any new trade or in-
dustry in British India is unfairly prejudiced, or
(b) if any trade or industry in British India is unfairly
prejudiced by the conditions attached by the patentee
to the purchase, hire or use of the patented article or
to the using or working of the patented process.
“23. (1) At any time not less than four years after the date of
a patent granted under this Act, any person may apply to the
Governor General in Council for relief under this section on the
ground that the patented article or process is manufactured or
oarried on exclusively or mainly outside British India.
(2) The Governor General in Council shall consider the
application, and, if after inquiry, he is satisfied : —
(a) that the allegations contained therein are correct ; and
(b) that the applicant is prepared, and is in a position to
manufacture or carry on the patented article or process
in British India ; and
(c) that the patentee refuses to grant a license on reasonable
terms ;
then, subject to the provisions of this section, and unless the patentee
proves that the patented article or process is manufactured or carried
on to an adequate extent in British India, or gives satisfactory
reasons why the article or process is not so manufactured or carried
on, the Governor General in Council may make an order : —
(а) revoking the patent either —
(i) forthwith ; or
(ii) after such reasonable interval as may be specified in the
order, unless in the meantime it is shown to his satis-
faction that the patented article or process is manu-
factured or oarried on within British India to an
adequate extent, or
(б) ordering the patentee to grant a license to the applicant
ivhich may be a license exclusive to him or otherwise
as the Governor General in Council may direct.
(3) No order revoking a patent shall be made under the last
sub-section which is at variance with any treaty, convention.
Ch. VIII] DEVELOPMENT OF INDIAN LAW 903
arrangement or engagement with any foreign country or British
possession.
(4) The Governor General in Council may, on the application
of the patentee, extend the time limited in any order made under*
sub- sect ion (2) clause (ii) for such period not exceeding two years as
he may specify in a subsequent order or revoke any order made
under subsection (2) clause (ii) or any subsequent order if in his
opinion sufficient cause is shown by the patentee.”
Section 23 A : —
“23A. An order of the High Court under section 22 or of the
Governor General in Council under Section 22 or Section 23 t direct*
ing the grant of any license, shall, without prejudice to any other
method of enforcement, operate as if it were embodied in a deed
granting a license and executed by the patentee and all other neces-
sary parties
Summary of the history of the law in British India.
It is thus seen that the position in British India has been : —
As to the tribunal empowered to order the remedies for an abuse by
the Patentee of his Monopoly : in 1888 this was H. E. the Governor
General in Council : in 1911 it was still H. E. the Governor General
in Council, alone in regard to the powers under Section 23, but in
regard to the powers under Section 22 it was H. E. the Governor
General in Council with an alternative power either to dispose of
the matter himself or to make a reference under Section 22(2) to the
High Court : in 1930 the same : at the present day the same.
As to the remedies which that tribunal was given power to
enforce : — In 1888 : the power was restricted to ordering compulsory
licenses. In 1911 : the power granted was not restricted to granting
licenses but was extended to revocation : it is to be noted that in a
case of manufacture exclusively or mainly outside British India, the
only remedy made available was revocation : In 1930 : the power of
granting compulsory licenses in a suitable case was made available
for a case of manufacture exclusively or mainly outside British
India equally aB on other grounds, and the remedies of compulsory
licenses or revocation were continued. At the present day : the
position is the same.
904
THE LAW OF PATENTS IN INDIA [Ch. VIH
As to the grounds on which the remedies could be exercised
these were broadly speaking : —
In 1888 : —
(i) reasonable requirements of the public not supplied.
(ii) interference with the working of an invention of a third
party.
(iii) non-working in British India.
In 1911 : —
(i) reasonable requirements of the public not satisfied
(i.e. (a) default of patentee to manufacture adequately or to carry
on the patented process adequately or to grant licenses on reasonable
terms so as to result in an existing or new industry being unfairly
prejudiced or so as to result in demand being not reasonably met ;
or (b) any industry being unfairly prejudiced by conditions imposed
by the patentee).
(ii) manufacture exclusively or mainly outside British India.
In 1930 :
(i) demand of a patented article in British India not met to an
adequate extent and on reasonable terms (i.e. (a) default of patentee
to manufacture adequately or to carry on the patented process ade-
quately or to grant licenses on reasonable terms so as to result in an
existing or new industry being unfairly prejudiced or so as to result
in demand being not reasonably met ; or (b) any industry being
unfairly prejudiced by conditions imposed by the patentee).
(ii) manufacture exclusively or mainly outside British India.
At the present day : the same.
Comparison between the Indian and English law.
As to the Act of 1888, it is seen that this section of the Indian
Act of 1888 is taken from the English Act of 1883 (see page 270
above) the wording of Section 22 of which it follows almost verbatim :
the only material difference being that the tribunal, in which the
power to issue the compulsory licenses is vested, is, in this case, the
Governor General in Council.
As to the Act of 1911 as originally passed this was in effect
precisely similar to the English Act of 1907 ; Sections 22 and 23 of
the Indian Act of 1911 corresponding to Sections 24 and 27 respec*
Ch. vm]
INDIAN LAW AND ENGLISH COMPARED
305
ively of the English Act of 1907, except that it should be noted that
whereas under the Indian Act of 1911 applications under both sec*
tions were required to be made equally to H. E. the Governor General
in Council, under the English Act of 1907, on the contrary, while ap-
plications under Sec. 27 were to be made to the Comptroller (with a
right of Appeal to the Court), applications under Sec. 24 were to be
made to the Board of Trade who if satisfied of a primafade case
was to make a reference to the Court.
As to the Act of 1930 the objects of this Act appear from the
Statement of Objects & Reasons in regard to Clause 16 of the Bill 1 .
The object of the first amendment in Section 2 is said to have
been merely to make the main ground of application for the grant
of a compulsory license or revocation more clear. It does not
purport to make any change in the law. In this connection
it may be noted that though the phrase “that the demand of a
patented article in British India is not being met to an
adequate extent and on reasonable terms” is in the Indian Act by the
amendment of 1930 substituted for the phrase “that the reasonable
requirements of the public with respect to a patented invention have
not been satisfied” which was used both in the English Act of 1907
and in the Indian Act as originally passed in 1911, yet the definition
of the meaning of both these two phrases which is given in Section
22 (5) is verbatim the same. This seems conclusive proof that no
alteration in the law was effected by the change of phrase. Another
amendment was directed to empower H. E. the Governor General in
Council to grant a license or exclusive license as an alternative
remedy to revocation in a case of manufacture exclusively or mainly
outside British India (under Section 23 (2) ) in a suitable case. This
has already been referred to in the summary above. Other
amendments were directed to delete sub-section (6) of Section 22 (as
to the mode of operation of any order made) and add a new section
in similar terms but applicable both to Sections 22 and 23 : that
amendment makes no alteration in the grounds or remedies available.
It is to be observed that these were all in the main minor amend-
ments. The provisions of the English Act of 1919 as a whole
have not been enacted in British India. In Particular no provision
for the creation of “licenses of right” or for the order of the
1. See App. No. 6 below.
THE LAW OF PATENTS IN INDIA
[Ch. VIII
806
compulsory endorsement of a Patent with the words “licences of
right” has been brought into operation in British India. Neither as
to the Tribunal nor as to the grounds nor as to the remedies (except
to the extent above noted) does the Act of 1930 in any respect
alter the Act of 1911 as originally passed. It is seen that the Indian
Act of 1911 almost exactly reproduced the effect of the English Act
of 1907, the Indian Sections 22 and 23 corresponding to the English
Sections 24 and 27 respectively ; but the Indian Act as amended by
the Act of 1930 does not reproduce the effect of the English Act of
1919. Indeed it appears doubtful what real advantage was sought
to be gained (apart from the new Section 23 A) by the alterations
effected in Sections 22 and 23 by the Indian Act of 1930. Accordingly
for all practical purposes the Indian Act of 1911 may be treated as
identical with the English Act of 1907.
The English cases on the construction of the English Act of
1907 (up till 1919) may therefore usefully be taken as a guide to the
construction of the Indian Act of 1911.
As to the proper general construction of Sections 22 & 23 :
whether a protective or a free-trade policy.
It can be said that Section 22 “deals primarily with cases
where the trade of this country has been injured by an abuse of the
monopoly conferred by the Patent, irrespective of anything which is
being done abroad.” While Section 23 “deals primarily with cases
where the object or the effect of the use of such rights in the way
they have been used has been to favour the development of industries
abroad” at the expense of industries in British India. And that
“the Sections may sometimes overlap, but that is the broad dividing
line between them.”*
It has also been held, in the same case, in effect that the
sections must be construed as intending to ensure that manufacturers
or merchants in this country will at least enjoy equal advantages
with manufacturers or merchants in other countries : but at the
same time that the sections should not be construed as going so far
as to intend to ensure that the manufacturers or merchants of this
country should enjoy a protection not enjoyed by similar persons
abroad. Whether this judicial interpretation pronounced in 1909
See Hatsehek’s Patents (1909) 26. R. P. O. 228.
9
Ch. VIII]
CONSTRUCTION OF THE INDIAN ACT
307
would have by now acquired any additional gloss which would have
given to it in England a more protective tinge must remain now a
matter of conjecture ; since the English Act in question has long ago
ceased to be the subject of any judicial interpretation. This is
however the judicial interpretation which the sections acquired in
England while in operation. It will be of interest to note here the
carefully reasoned passage in the judgment of Parker J. where this
construction was reached : —
“The question was much discussed as to whether anything
more could be required of a patentee than to deal with this and
other countries on the same terms and in the same manner, or
whether the patentee is bound to exclude foreign goods altogether
for the benefit of the trade of this country. It was argued that the
mere fact that a patentee has allowed goods made abroad, whether
under the Patent or resulting from the patented process, to be
imported into this country, and to compete in this country with
goods here, is an improper use of his patent rights. In other words,
it was argued that the policy of Section 27, is not only to secure
fair play for the traders of the United Kingdom but to give such
traders a preference over foreign traders and prevent the latter from
entering into competition with the former on equal terms so far as
the patentee can, by an exercise of his monopoly, secure inequality.
This argument in effect asserts that the policy of the Act is a
protective and not a free-trade policy. Whatever be one’s own
personal views as to the advantage or disadvantage of a protective
policy compared with a free-trade policy, I am not prepared to hold
that a patentee who has allowed part of the demand in this country
to be supplied by the importation of goods from abroad, has
necessarily precluded himself from proving that the manufacture of
the patented article, or the use of the patented process, in this
country, is adequate within the meaning of the 27th Section, or from
giving satisfactory reasons why it is not adequate. If this had been
the meaning of the Legislature, I think that on so important a matter
of principle, clearer words would have been used. The policy of the
Section appears to me to be directed to securing fair, play between
foreign industries and the industries of this country, and not to
secure for the latter during the period of the Patent a protection
which they would not enjoy if no Patent had been granted, and
308 THE LAW OF PATENTS IN INDIA (Ch. Vin
which the Legislature can always seoure for them either temporarily
or permanently, if and when, it con8ider8_fit. ,,
Whether or not the Government of India in the coming
industrial development of India will be satisfied with this “free
trade” policy as being sufficient encouragement to indigenous
industrial enterprise or whether they will prefer a more positive
“protective” policy in respect of the working of Indian Patents in
India is a matter of policy for their decision. Unless there is
effected any amendment of the Sections, it is submitted that the
judicial interpretation given above will be the one which should
commend itself to the Courts in India. To put any other construc-
tion on the Sections 22 and 23 now would make for much uncertainty
both among inventors and the public ; who may it is submitted
reasonably expect that the Sections will retain in India the same
meaning which has been placed on the same words in precisely
similar sections in the Courts in the United Kingdom.
As to decisions bearing on the construction of Section 22.
There appear to be no reported Indian decisions of any Peti-
tions lodged under Section -22 of the Indian Act : as such decisions
are made direct to H. E. the Governor General in Council and as
there is no appeal from his decision these petitions do not coine
before the Courts. They are thus not reported in the Indian Law
Reports.
There appears to be an almost equal scarcity of any reported
English decisions of Petitions lodged under the precisely correspond-
ing Section 24 of the English Act of 1907. The reason for this is
no doubt somewhat similar. Such Petitions under such Section
24 were made, as already noted, to the Board of Trade in the first
instance. They would accordingly not as a rule be reported in any
English Law Reports. It is true that the English Act provided for
a reference by the Board of Trade to the Court. But there do not
appear to be any reported decisions of the Court on such a
reference.
Some guidance as to the principles of construction to be
employed may it is submitted be obtained from general observations
contained in the reported English decisions on the other section
(Section 27 of the English Act of 1907) corresponding to Seotion 23
of the Indian Act of 1911.
Ch. VIII] DEMAND NOT MET : UNFAIRLY PREJUDICED
809
In addition to this, considerable assistance is to be obtained,
it is 8ubmitied, from certain English cases which were decided on
English Acts prior to the Act of 1907. The difference in general
meaning between the phrases used in the Act of 1883 and in the Act
of 1902 on the one hand and the phrases used in the Act of 1907 on
the other hand is for many cases negligible. Therefore certainly the
cases on the Acts of 1883 and 1902 are in point. It would seem
also that as to general principles the more recent English cases on the
Act of 1919-1932 may also be relied on as authority to show when
the Court may be expected to enforce the remedies of compulsory
licence or revocation for non-supply of the patented invention to the
public in British India.
It may be observed that there appear to have been very few
contested cases on this question of the extent of the obligation of
the patentee to afford an adequate supply of the patented article in
the United Kingdom and on the correlated question of the extent to
which compulsory licences would be granted for the patentee’s
default. Probably it is correct to say that though resort to the
statutory remedies in this respect was not of high frequency, yet the
mere presence of these statutory enactments gave the aggrieved
party a sufficiently strong weapon in his bargaining negotiations for
the grant of a licence to effect in practice the purpose for which they
were enacted ; and to ensure a sufficiently adequate supply on
sufficiently reasonable terms of the patented article.
As to what amounts to the “demand not being met to an adequate
extent and on reasonable terms” : and as to what amounts to
“unfairly prejudiced” within the meaning of Section 22 of the
Indian Act.
The English decisions in the following cases brought under the
English Act of 1883 (the wording of which has been set out earlier
in this chapter) are of interest as instances showing in what nature
of circumstances and on what grounds recourse may be had to a
Petition for a compulsory licence. In two of the cases referred to
it is clear that a compulsory licence would have been issued had it
not been, in one case, for the offer made by the Patentee ; and but
for the fact that it was shown in the other case that the applicant
company was not in a position to manufacture in the event of any
310 THE LAW OF PATENTS IN INDIA [Ch. VIII
compulsory licence being granted. In the third case a compulsory
licence was ordered.
(i) In the case of the Incandescent Oas Light Company’s
Patent (Meteor Petition i), 3 the position was complicated by a certain
pending suit for infringement but the principal matters of interest
for the present purpose arc these. The Incandescent Gas Light Co.
Ltd. (to whom reference will be made as the Patentee Company) was
the patentee in respect of two patents being No. 15286 of 1885 and
No. 124 of 1893. These patents related to “the manufacture of an
illuminant appliance for gas and other burners” and to “an improve-
ment in incandescent burners” respectively. A company of which the
full name was the Continental Gas Gluhlicht Action Gescllschaft
“Meteor” vormals Kroll, Berger and Co. but to which reference will
be made for brevity as the Meteor Company was the owner of a
Patent No. 24083 of 1896 (originally granted to one Thompson) re-
lating to “Improvements in burners for incandescent petroleum
lamps.” It seems that the Meteor Coy. had agreed to grant the
exclusive right of manufacturing lamps under its Patent to a com-
pany styled the Stock and Debenture Corporation Ltd.
On the 18th February, 1897 a letter had been addressed (by
Thompson) to The Incandescent Gas Light Company Ltd., as
follows : —
“I have recently patented an invention for an incandescent
petroleum lamp, No. 24083 of 1896, as a communication from
abroad. In order to develop the same commercially in this country,
I or my principals will require the use of a mantle containing
thorium, of which substance I understand you claim the monopoly
for this purpose. Will you kindly inform me on what rate of royalty
and on what terms you will grant a licence to import such mantles
from abroad for use for such patented lamp. I should also be glad
to know whether, and on what terms, you would be disposed to
undertake to supply mantles equal in quality to those you supply for
the gas burners to be used with the said lamp. Awaiting the favour
of an early reply, I remain.” On the 22nd February, 1897, the
Patentee Company had replied as follows : —
“In reply to your enquiry of the 18th instant, we are not dis-
posed to grant any license or to supply mautles.”
________
Ch. VIII]
CASES
311
The Petitioners then lodged their Petition in which they conten-
ded that by reason of the aforesaid default of the Patentee company
to grant a licence on reasonable terni3 under their said patents, the
petitioners were prevented from working or using to the best
advantage the said invention of patent No. 24083 of 1896 • and
further that the reasonable requirements of the public with
respect to the invention of the Patentee Company could not be
supplied.
The Petition was presented by both the Meteor Company and
the Stock Corporation.
The Board of Trade being of opinion that a prima facie case
for relief had been made out, appointed Mr. Roger W. Wallace Q. C.
as Referee to hear the petition and to report ; and the matter was
heard before him as Referee. On behalf of the Patentee Company
it was urged that it had not been made out by the Petitioners that
the Patentees had been guilty of any default within the meaning of
Section 22, of the Patents &c., Act, 1883, and that under the circum-
stances no unreasonable refusal on the part of the Patentees had
been shown. It was also submitted that the Stock and Debenture
Corporation Ltd. were not in such a position as to warrant the grant
of the licence to them.
During t he course of the hearing the Stock and Debenture
Corporation withdrew from the Petition.
An application was then made for leave to amend the petition
by asking for the grant of a licence to The Meteor Company on their
giving an undertaking to manufacture in this country and the Referee
was asked to give his decision on this point before going any further,
and it was said that if the decision was against the Petitioners, there
would be an end of the matter. The Referee intimated that he was
against the Petitioner’s Counsel on this point ; and could not allow
such amendment. It was in these circumstances that the Referee’s
decision came to be made recommending the dismissal of the
Petition. As was pointed out by the Referee the procedure was that
he reported to the Board of Trade and the Board of Trade gave the
decision. Finally by the Order of the Board of Trade, which was
made on the 19th of May 1898, the petition was dismissed.
312 THE LAW OF PATENTS IN INDIA [Ch. V1H
(ii) See Levinstein's Petition .* The Farbwerke vormals
Meister Lucius and Bruning carrying on business at Hoechst-am-
Maine in Germany (to whom reference will be made for brevity as
the Patentee Company) were the patentees in respect of two English
patents No. 9642 of 1889 relating to “the production of oxysulphonic
acids of naphthaline” and No. 15176 of 1889 for “Improvements in
the production of amido-napthol-mono-sulphonio acids and the
manufacture of their diazo compounds and azo colouring matters
therefrom.”
It appears that Levinstein Ltd. was a company carrying on
manufacture on a large scale as manufacturing chemists at Manches-
ter. They had for a long time been engaged in the production of
colouring matters and were the owners of several patents for new
dye-stuffs. They desired to manufacture these new dye-stuffs but
these could only be manufactured by employing the patented pro-
cesses of the Patentee Company. Prior to the filing of the Petition
there was correspondence between the Levinstein Company and the
Patentee Company in which the former asked for and the latter
refused a licence. The Levinstein Co. then filed the Petition for a
compulsory licence on the grounds in effect the Patentee Company
had wholly failed to introduce the use of their patented processes
into the United Kingdom, that the Levinstein Coy. was well able to
introduce and carry on the manufactures if licensed so to do, that
the Levinstein Company had applied to the Patentee Company for a
licence but that the Patentee Company had refused and still refused
to grant any such licence as was necessary to enable the Petitioners
to introduce the patented manufactures within the United Kingdom
and to work and use to the best advantage the said inventions of
which the Petitioners were possessed. They prayed for an order
under Section 22 of the English Act of 1883 that the Patentee
Company should grant to the Levinstein Company a license under
the two patents of the Patentee Company upon the terms set out in
a Schedule to the Petition or upon such other terms as might be just.
The letters which comprised the correspondence before suit as well
as the matter contained in the Petition and also the terms of the
compulsory licence prayed for, which were stated in the said
Schedule, are all fully reported in the report in 15. R. P. C. 732 ;
and are instructive. The Board of Trade considered that a prima
(1898) 15. R. P. 0. 732.
Ch.vm]
ORDER FOR A COMPULSORY LICENSE
318
facie case bad been made out and ordered that the matter should
proceed ; and appointed Mr. R. Wallace Q, C. as referee to hear the
Petition. At the hearing it was argued in effect for the Patentee
Company that they had not been guilty of any “default” within
Section 22 of the English Act of 1883. That the Patentee Company
had always offered to sell their goods to the Petitioners at a fair
price. And that there had never been any default to grant licenses
by the Patentee Company on reasonable terms. That though the
Patentee Company did not manufacture in the United Kingdom it
had always been ready to sell at a reasonable figure. Up till that
date there had been no demand in the United Kingdom for their
acids. That the Levinstein Company could not make the materials
any cheaper than the Patentee Company. No license to make should
be granted. The point was also pressed that an applicant for a
license under the Section could not assert that because in other
countries in which he wished to compete there were no patents, the
Patentee in England therefore should be compelled to be put on such
terms that the applicant could successfully compete with the free
traders in those other countries.
It was argued for the Petitioner Company in effect that the
Patentee Company only held its patents in England for the sake of
blocking trade. That the original idea of granting a patent to an
importer of an invention was as a reward for the introduction of the
invention : reference was made to Coke’s Institutes Yol. 3 page 184.
In this case there had been no introduction. The Patentee Company
did not work any of its patents in England, nor had it granted
licenses to anyone in England, nor did it wish to, nor would it.
There was therefore default. If there had been no patents in
England the processes would have been worked. As to sub-section
(b), the requirements of the public were shown by their desire for the
Petitioner Company’s dyes. As to sub-scction (o), it was clear that
the Petitioner Company was prevented from working its own inven-
tions to the best advantage. The Referee evidently reported to the
effect that a compulsory license should be issued. And upon consi-
deration of the Referee’s Report the Board of Trade made an order
granting a compulsory licence. For convenience of reference it may
be worth while to set out here the terms of such order and the terms
of the Schedule referred to in that Order by which the terms of the
compulsory license were stated,
40
314
THE LAW OF PATENTS IN INDIA
[Ch. VIII
THE ORDER
After reciting Section 22 of the English Act of 1883 the order
proceeded as follows.
“And whereas, on the 11th of June 1889, a patent numbered
9642 was granted to Oliver Imray, of 28, Southampton Buildings,
London, patent agent, for an invention communicated to him by The
Farbwerke vormals Meister Lucius, and Bruning, of Hoechst-am-
Maine, in the German Empire (hereinafter called the Patentees),
relating to the production of oxysulphonic acids of napthalin : And
whereas, on the 24th of May 1892, the said patent was duly assigned
by the said Oliver Imray to the Patentees, which said assignment
was, on the 27th of May, 1892, duly registered at the Patent Office :
And whereas on the 26th September, 1889, another patent numbered
15176 was also granted to the said Oliver Imray for an invention,
in like manner communicated to him by the Patentees, relating to
improvements in the production of amidonapthol-mono-sulphonic
acids, and the manufacture of their diazo compounds and azo
colouring matters therefrom : And whereas, on the 24th of
May, 1892, the said patent was assigned by the said Oliver
Imray to the Patentees, which said assignment was, on the
27th of May, 1892, duly registered at the Patent Office : And
whereas the Petitioners presented a petition to the Board of
Trade under the said section for an order that the Patentees, under
the said Letters Patent No. 9642 of the 11th of June, 1889,
and No. 15176 of the 26th of September, 1889, should grant to
the Petitioners a license under or in respect of the inventions
described and claimed in and by the Specifications of the said
repectivc Letters Patent : And whereas, on consideration of the
said petition and of the matters therein mentioned, it has been
proved to the Board of Trade that the said Petitioners are persons
interested in the matter of the said Petition, and that by reason of
the default of the Patentees to grant licenses on reasonable terms
the said patents are not being worked in the United Kingdom, and
that by reason of the default aforesaid the said Petitioners are
prevented from working and using to the best advantage certain
inventions of whioh they are possessed : Now, therefore, the Board
of Trade, in exercise of the power conferred upon them by Section
22 of the Patents, Designs, and Trade Marks Act, 1883, and of all
ch.vm.]
FORM OF COMPULSORY LICENSE
315
.other powers enabling them in this behalf, do hereby order as
follows : —
(1) That a license, to take effect from the date of this Order
and in the form set forth in the Schedule hereto, be forthwith grant*
ed by the Patentees to the Petitioners to make, use, exercise, and
vend within the United Kingdom the inventions described and
claimed in and by the Specifications of the said Letters Patent Nos.
9642 and 15176 of 1889 for the unexpired residues of the respective
terms of the said Letters Patent at a royalty of one half penny for
each pound weight avoirdupois of products made by the licensees
under the said Letters Patent or either of them, but so that in each
year a minimum royalty of £250 per annum shall be paid by the
licensees, and the Patentees shall forthwith deposit such license duly
executed by them with the Board of Trade.
(2) The said Petitioners, before the 6th day of August 1898,
shall execute and deposit with the Board of Trade a counterpart
license in the form aforesaid, and in default of their doing so this
Order shall be of no effect.
Dated this 6th day of July, 1898.
(Signed) Courtenay Boyle,
Secretary, Board of Trade.”
THE SCHEDULE
The Schedule was worded as follows : —
“This indenture, made the day of , between
The Farbwerke vormals Meister Lucius, and Bruning, of Hocchst-
am-Maine in the Empire of Germany (hereinafter called the Paten*
tees), of the one part, and Levinstein, Ltd., and Ivan Levinstein,
managing director of Levinstein, Ltd. of Minshall Street, Manchester,
in the county of Lancaster (hereinafter called the licensees), of the
other part : Whereas, by an Order of the Board of Trade dated the
6th day of July, 1898, and made under Section 22 of the Patents, Dc*
signs, and Trade Marks Act, 1883, it was ordered that a license, to
take effect from the date of the said Order, should be granted by the
Patentees to the licensees to make, use, exercise, and vend the inven-
tions described in the Letters Patent hereinafter mentioned (to the
benefit of which the Patentees are entitled) in the form set out in
the Schedule to the said Order, being the form of these presents :
316 THE LAW OF PATENTS IN INDIA [Ch. Vfll
Now, this indenture witnesseth that in pursuance of the said Order
the Patentees do hereby grant to the licensee license within the
United Kingdom to make, use, exercise, and vend the inventions
described and claimed in and by the Specifications of the Letters
Patent Nos. 9642 and 15176 of 1889 mentioned in the said Order :
to hold, exercise, and enjoy the said license for and during all the
residues now to come and unexpired of the respective terms of the
said Letters Patent and during any further term for which the said
Letters Patent or either of them may be extended ; and the licensees
hereby covenant with the Patentees that the licensees will, during
the continuance of this license, pay to the Patentees half-yearly,
on every 6th day of January and 6th day of July, royalties
at the rate of a half penny for each pound weight avoirdupois
of product made by the licensees under the said Letters Patent or
either of them in the half years then ending respectively : Provided
always that if the royalties payable in any year ending on the
6th day of July shall not have amounted to the sum of £250
the licensees shall, on such 6th day of July, pay to the Patentees
such further sum as with the said royalties shall amount to the
said sum of £250 hereinafter called the yearly rent. The licen-
sees do hereby also covenant with the Patentees that the licen-
sees will, during the continuance of the license, keep proper
accounts in separate books containing full particulars of all
products made by them under this license, and of all other things
which may be material for the purpose of showing the amounts pay-
able to the Patentees by way of royalty, and will at any time
produce the same for the inspection of the Patentees or any person
appointed by them, who shall be at liberty to make copies from or
extracts from any of the accounts or matters therein contained, and
that the licensees will within ten days after each of the half-yearly
days aforesaid deliver to the Patentees an account in writing, show-
ing all the particulars and matters aforesaid with respect to the
products made duriug the preceding half year * And it is hereby
agreed and declared that the Patentees shall be at liberty at any
time during the continuance of this license to enter upon any
factory or place of business of the licensees in which manufacture
of the said products shall be carried on at any reasonable hour with
a view of obtaining all such information as may be material for the
purpose of ascertaining the amount of royalty payable to them
Ch. VIII]
OTHER OASES
317
under this license : And it is hereby also agreed and declared that
if any payment of royalties or yearly rent under this license shall be
in arrear for one month after the same shall have become due
(whether payment thereof shall have been demanded by the
Patentees or not), or if the licensees shall make default in the per*
formance of any obligation on their part herein contained, and shall
not have made good the same within fourteen days after the
Patentees shall have by notice in writing required them to do so,
then the Patentees may, with the consent of the Board of Trade,
by notice in writing to the licensees revoke this license as from the
date of such notice without prejudice to the right of the Patentees
to recover any monies then due hereunder : And it is hereby also,
agreed and declared that if the said Letters Patent or either of them
shall become void, or shall be declared by a Court of Law to be
void, the licensees may, with the consent of the Board of Trade, by
notice in writing to the Patentees, revoke this license.
As witness, <&o.”
(iii) See Bartlett’s Patent ( the Oormully and Jeffery Mnfg. Co’s
Petition). 5 The material facts in that case were these. In 1890
Bartlett had obtained a patent ( No. 16783 of 1890) for an
Invention relating to an improvement in tyres or rims for cycles
or other vehicles. At the date of the Petition now under
consideration this patent was vested in the Dunlop Pneumatic
Tyre Co., Ltd. The Gormully and Jeffery Manufacturing Company
was a company which manufactured and sold tyres and rims for
oycles : they were the proprietors of another patent (No. 5370 of
1894) granted to one Lorraine for Improvements in wheels. Desiring
to manufacture certain wooden rims in combination with a parti-
cular kind of tyre which they were unable to do without a license
from the Dunlop Company, they brought this Petition for a com-
pulsory license. Previous to the filing of the petition they had
written to the Dunlop Company asking if they would grant them a
license and stating they would pay royalty at the highest rate that
the Dunlop Company reoeived from anyone. Previous to the filing
of the Petition there were also interviews between the Solicitors
of the parties at which it had been stated by the Solicitor for the
Dunlop Company that that Company had purchased the Patent
* ( 1899) 16. R.P.C. 641. ' ~~
318
THE LAW OF PATENTS IN INDIA
[Cb.vni
(Bartlett’s Patent) upon a condition that they granted one license
to one W. E. Bartlett and that they might grant besides that, only
one other license ; add that they had already granted that one other
license to a certain Company being the Clipper Pneumatic Tyre
Co., Ltd. It had been suggested by the Gormully Company that the
Dunlop Company and Bartlett and the Clipper Company might join
in granting the license asked for ! but nevertheless the Dunlop
Company had refused to grant a licence. The Gormully Company
then by this Petition applied to the Board of Trade for a compulsory
license. That the license in question was a valuable one and the
question in issue important sufficiently appears from the fact that
the North British Rubber Co., Ltd. who had been the owners of
Bartlett’s Patent previously to the Dunlop Co. had assigned
their ownership, on terms reserving a license to themselves,
for £200,000 sterling ; and that the Clipper Company had paid
£70,000 for the license which they had acquired from the Dunlop
Company. The grounds of the Petitioners case were in effect that
their own Patent was one of utility to the public, for which there
had been an extensive use in the United States ; and that they
could not manufacture their article without a license from the
Dunlop Company ; and that in view of the refusal of the Dunlop
Company to comply with their request for a license, they were
entitled to claim the issue of a compulsory license.
The Petition was opposed not only by the Dunlop Company
but also by the North British Rubber Company Ltd. and the Clipper
Pneumatic Tyres Company Ltd. who both gave notice of objection
and applied for leave to appear and take part in the proceedings.
They alleged, for various reasons, that they were each interested in
the matter and in effect that the grant of any further license addi-
tional to those already existing would be highly prejudicial to their
interests. The North British Rubber Co. Ltd. stated that at the
date of their notice of objection they were licensees of Bartlett’s
Patent : that they had at some previous time been the owners of
that Patent but had assigned it for £200,000 and for the license
they then held. They also stated that the present owners had
bound themselves to grant only one other licence ; that this had been
granted. Leave was granted to both Companies to appear and take
part in the proceedings. The Board of Trade appointed Mr. W. R.
Ch. VIIL] MNFCTD. EXCLUSIVELY OR MAINLY OUTSIDE B. I. 3lfl
Bou afield Q. C. Referee to hear the Petition and report. It was
objected to the Petition that the Petitioners were an American Com-
pany and ought not to be allowed to compete with English firms.
As to this the Referee indicated that he might require an undertaking
that the Petitioners proposed to manufacture in England and that
the Petitioners were prepared to work under the license if granted.
After a good deal of discussion as to whether or not it was
necessary that the Petitioners should seek the relief asked for against
all the three companies mentioned, the Petition for greater safety
was finally amended by adding the words “and the North British
Rubber Company Ltd. and any other person interested in the
Patents” after the name of the Dunlop Pneumatic Tyre Company
Limited.
During the hearing eventually a certain offer to manufacture
and supply on certain terms to the Gormully Company the tyres
required was made by the North British Rubber Co. Ltd. There
then followed some discussion as to whether this offer was a
reasonable offer or not : the Referee holding in effect that apart
from any question of costs if the offer was a reasonable offer, even
though it was made after the Petition had been filed and was part-
heard, the Board of Trade would not resort to issuing a compulsory
license provided it was satisfied that the offer was made bona fide.
After argument it was held that the offer was a reasonable offer.
The Referee asked the Petitioners whether or not they were willing
to accept the offer. On the Petitioner refusing to accept the offer,
the Referee recommended to the Board of Trade that the Petition,
in view of the offer, should be dismissed. And eventually the Board
of Trade agreeing with the report of the Referee dismissed the
Petition. During the hearing it was pointed out on behalf of the
Petitioners how they might suffer in the case of an offer being made
so late by having to pay the costs of the expensive proceedings
without any remedy : this was commented upon but in view of the
Act it was held impossible for the Board of Trade to grant any costs
in respect of the Petition in such a case.
Reported decisions bearing on the construction of Section 23 of
the Indian Act.
In respect of Section 23 of the Indian Act equally as for
Section 22 there are no reported Indian decisions. In this instance
320
THE LAW OF PATENTS IN INDIA
[ch. vm
the position is however different in regard to the precisely corres-
ponding English section (section 27 of the English Act of 1907).
For not only has that section been very carefully considered by the
Supreme Court in England when Petitions under that section have
come before the English Court on appeal from the Comptroller and
those cases have been reported ; but several cases of the decisions
in the first instance of the Comptroller have also been reported in
the Official English Reports of Patent Cases. The principles laid
down in those English decisions are therefore directly and precisely
in point in considering the proper construction of Section 23 of the
Indian Act of 1911.
As to what amounts to “manufactured exclusively or mainly
outside British India” within Section 23(1).
These phrases have been judicially considered and construed
in the following interesting and illuminating passages in the judg-
ment of Parker J. in Hatschetfs Patents 9 thus : —
“The first question is this, what is the state of circumstances
the existence of which imposes this serious liability on a patentee.
In the words of sub-section 1 it is whenever “the patented article or
process is manufactured or carried on exclusively or mainly outside
the United Kingdom.” There is no difficulty in the use of the word
“exclusively”, but the use of the word “mainly” gives rise to the
difficulty. The sub-section may, and it was argued that it did, include
every case in which the patented article or process is manufactured
or carried on to a greater extent outside than inside the United
Kingdom. If it is the true meaning, then in every case in which
more than 50 per cent of the patented articles manufactured any-
where are manufactured abroad, the patentee can be called upon to
justify the use he has made of his monopoly and to defend his patent
rights. I cannot think that this is the true meaning of the sub-sec-
tion. However great may be one’s belief in the industrial supremacy
of the inhabitants of these islands, it would at least be somewhat
arrogant to assert that wherever the manufacture of a patented
article in the United Kingdom is less than one-half of the total
manufacture of the whole world, there arises a presumption that
British trade has not had fair play — a presumption that the patentee
• (1902) 26. R. P. C. 228 at p. 240. ™"
Ch. VIII]
MEANING OF “MAINLY”
321
has been abusing his monopoly. If the patented article be manu-
factured in the United Kingdom to as great an extent as can reason-
ably be expected having regard to the industrial development ofothbi-
countries I do not think any presumption against the patentee can
fairly arise, nor do I think that the Legislature intended it should
arise. The word “mainly” is used in the sub-section in close connec-
tion with and as an alternative to the word “exclusively/' and,
having regard to this fact, I do not think that a processor article
can be said to be mainly carried on or manufactured abroad merely
because it is carried on or manufactured abroad to a somewhat
greater extent than within the United Kingdom. For example, if
the total manufacture in the United Kingdom were 1200 and the
total manufacture elsewhere 1250, giving a total 2450 in all, I do
not think it could be said that the manufacture was mainly abroad
within the meaning of the Section ; to come within the sub-sec-
tion the disparity must, in my opinion, be greater than a mere small
percentage, and indeed if the article be manufactured or the process
be carried on within the United Kingdom, not only to a substantial
extent, but to an extent as substantial as may reasonably be expect-
ed, having regard to what is done abroad, I do not think the state of
circumstances is that contemplated by sub-section 1.
It was further argued before me that sub-section 1 institutes a
comparison, not between the extent to which an article or process,
the subject of a British Patent, is manufactured or carried on in this
country and the extent to which it is so manufactured or carried on
abroad, but between the number of patented articles made abroad,
either in accordance with the Specification, or by means of the process
described in the Specification and imported into this country and the
number of such articles so made in this country. This argument was
based on the use of the word “patented”, it being contended that the
use of this word showed that the Legislature was only referring to
what was done within the area of the monopoly created by the patent
and that the manufacture of the articles or the carrying on of
the processes abroad did not come within the area of the monopoly
unless and until the goods manufactured, or the goods resulting from
the process were imported into this country. I cannot conceive that
if the Legislature had meant this it would not have said it in plainer
words. In my opinion, therefore, the sub-section institutes a compari-
41
THE LAW OF PATENTS IN INDIA
[Ch. VIII
son between the extent to which the article or process, the subject of
the Patent, is manufactured or carried on in this country, and the
extent to which it is manufactured or carried on abroad, whether the
articles so manufactured or resulting from the process so carried on
abroad are or are not imported into this country. I have come to this
conclusion more easily because the real strength of the argument
to the contrary consisted in considering how far-reaching would be
the effect of the Section if I gave the words in the Section
their prima facie meaning and at the same time held that whenever
the article or process was manufactured or carried on to a greater
extent abroad than in the United Kingdom, the case was within
sub-section 1. As I have already held that this is not so, there
is nothing to justify me in departing from the plain words.
It has also been suggested that the sub-scction only institutes a
comparison between what is being done abroad and at home respec-
tively by the patentee, his licensees and agents, and that what is done
otherwise may be left out of account. I cannot think that is the
true meaning of the Section. Suppose the patentee had no foreign
patents, and yet for some reason of his own chose to prevent the
industry arising here, while industries in the patented article or
process were being developed abroad, I think the Section would
apply. It seems to me that the Section is meant to hit any abuse of
the monopoly, the object or result of which was to benefit foreigners
at the expense of the traders within the United Kingdom.”
As the material phrases in the Indian Act are the same it is
submitted that the principles enunciated in that case will be equally
applicable to British India.
As to what amounts to "adequate extent” and “satisfactory
reasons” within section 23 ( 2 ).
These phrases also were considered and construed in the same
judgment : thus : —
“I will pass now to the other sub-section, assuming that the
Applicant has satisfied the Comptroller that the state of cir-
cumstances contemplated by the first sub-section has arisen. The
patentee is then clearly on his defence and must either prove that the
article or process is manufactured or carried on in the United King-
dom to an adequate extent, or give satisfactory reasons why it is
Ch. vin]
SATISFACTORY REASONS
323
not so manufactured or carried on. The difficulty in construing
these provisions arises from the use of the somewhat elastic ex-
pressions “adequate” and “satisfactory”, the meaning of which
depends largely on the point of view from which the facts which may
be proved are considered. In my opinion the Legislature has used
these somewhat vague expressions advisedly, it being left to the
Comptroller, subject to an appeal to the Court, to determine in each
case, and having regard to all the circumstances, whether the extent
to which the article or process is manufactured or carried on, is
adequate, and if not, whether the reasons put forward arc satis-
factory. I shall not, therefore, attempt to define the meaning of
these expressions, but in considering any case which may arise, there
are, in my opinion, one or two general observations, which ought to
be borne in mind. First, as I have already said, the patentee is on
his defence, and this being so, I do not think the extent to which
the article is manufactured, or the process carried on, can be consi-
dered adequate if it be less than it would have been, but for the fact
that the patentee has exercised the rights conferred by his Patent
to the hurt of British industry, — for example the fact that he has
given foreign traders a preference over British traders. Similarly,
I do not think that any reasons can be satisfactory which do not
account for the inadequacy of the extent to which the patented
article is manufactured or the patented process is carried on in this
country by causes operating irrespective of any abuse of the mono-
poly granted by the Patent. The first thing therefore, for the
patentee to do is, by full disclosure of the manner in which he has
exercised his Patent rights, to free himself from all suspicion of
having done anything to hamper the industry of the United Kingdom.
When once he has satisfied the Comptroller of this, he will have
gone a long way towards proving what he has to prove, and even if
he cannot prove adequacy, he ought to be able to show satisfactory
reasons for inadequacy. This construction of the Act is in accor-
dance with Article II of the 1902 Convention which provides that
no Patent is to be revoked in any country, which is a party to the
Convention, until three years at least from the date of application
for the Patent, and then only if the patentee cannot show reasonable
cause for his inaction. It is therefore the conduct of the patentee
which is in question. Has he done anything which he ought not to
have done, or omitted to do anything which he ought to have done,
THE LAW OF PATENTS IN INDIA
[Ch. VIII
having regard to his obligations towards the traders of this country ?
In considering the conduct of a patentee various questions may
arise as to whether ho has or has not exercised his rights fairly
and properly, having regard to the interests of the trade of the
United Kingdom, and for the most part these questions must be
decided with reference to all the circumstances of the particular
case, including, I think, the nature of the patented invention.
But a patentee certainly ought not to give foreigners any preferen-
tial terms in the grant of licences or otherwise, nor ought he to
utilise the period prescribed by sub-section 1 in developing foreign
industries as opposed to the industries of the United Kingdom, and
at the end of the period seek to defend his conduct by offering to
grant licences in this country on the same terras as he has granted
them abroad. If he exercises his rights in such a way as to give
other countries four years start of this country in developing a new
industry, he is not, in my opinion, exercising his rights fairly as
regards the trade of this country. He must at least take the same
pains to develop the new industry here as he does abroad.”
(The learned Judge then considered whether the policy of the
Section was protective or free trade in the passage already cited : 7
and continued).
“It follows from what I have said above that “adequate” can-
not mean simply adequate to supply the demand in this country, or
be considered only with reference to the demand in this country for
the patented article or the article produced by the patented process.
The demand in this country may in some cases not only be a demand
for the patented article but a demand for the patented article as
made by a particular firm or as made abroad. If, for example, the
Patent be for a new article, and such article be manufactured both
here and abroad, and part of the demand here be for the article
made abroad, because it is got lip more to the taste of a section of
the public, I do not think that the manufacture here could on that
account alone be said to be inadequate. To so hold would, in effect,
be to force a patentee to use his patent rights to exclude altogether
the import of foreign goods. I agree that the demand and supply
in this country are to be considered, though they are not the only
f See page 307 above.
Ch. VIII]
WHAT IS “ADEQUATE”
325
facts to be considered upon the question of adequacy. If there was
insufficient manufacture here to meet the demand for the home-
made article, it might well be that the manufacture might bo held
to be inadequate, but, even if there were no demand here at all, the
manufacture might be inadequate because the rights of the patentee
might have been so exercised as to preclude the growth of a demand
by tho imposition of unreasonable prices or unreasonable terms for
licences, or simply because the patentee had wholly neglected this
country in his efforts to develop a foreign trade. Every case must
be considered on its own merits and with reference to its own atten-
dant circumstances.
It was suggested that if a patentee could prove that an industry
in a patented article or founded on a patented process could not be
carried on in this country or as profitably as it could bo carried on
abroad owing to difference in the cost of material or labour, or
other local conditions, he would have given a satisfactory reason
within the meaning of the Section. I do not think this suggestion
is entirely correct. Certainly the fact that persons who were carrying
on the industry in this country would make smaller profits than
persons carrying it on abroad would, in my opinion, be no satisfactory
reason at all. I can conceive cases in which a patentee having ob-
tained a Patent may find it impossible to work it in the United King-
dom because of the nature of the invention, or beoause of local
conditions which prevail here, but not in other countries, although
these cases must, I think, be rare, and may be exceedingly difficult to
prove. The extra cost of labour or material may well be counter-
balanced by superior skill or in other ways. But it can never in my
opinion, be sufficient for a patentee, defending himself under the Sec-
tion, to prove that he cannot now start an industry with any chance
of profit. The question really is : could he have done so if he had
used his monopoly fairly as between home and foreign trade, or if he
had devoted the time and money which he has expended in develop-
ing a foreign industry to developing a home industry ? It may well be
that having developed the industry abroad and given foreigners
several years start, ho may find it difficult, if not impossible, to
develop an industry on the same lines here, and yet such an
industry might well have arisen but for the preference he has given
to foreign countries. It was also suggested that the Section only
326
THE LAW OF PATENTS IN INDIA
[Ch. VIII
contemplates revocation, if revocation would lead to the establish-
ment of a new industry or the further development of an existing
industry in this country, so that if the patentee had by an abuse
of monopoly succeeded in precluding the possibility of such
establishment or development, his Patent ought not to be revoked.
I dissent entirely from this suggestion. I see no reason why the ,
Section should not have been intended to penalise a patentee who
has abused his monopoly and by a revocation of the Patent this
country becomes at any rate free from restraint on its trade which
is opposed to the spirit of its common law.”
It is submitted these principles are also equally applicable to
British India.
Various English Cases.
The following cases may usefully be referred to :
(i) Johnson’s Patent.* In that case, which related to a patent
for improvements in sewing machines, the Patentee admitted that
the machines made in accordance with the patented invention were
wholly made abroad : the . defence was that it was contended that
owing to the special tools and the high precision of manufacture
required, certain important parts could not be made in the United
Kingdom or could only be made with great difficulty and expense
and delay. It was held after a consideration of the Particular cir-
cumstances of that case that satisfactory reasons for non-manufac-
ture had not been given ; and an order was made revoking the Patent
forthwith.
(ii) Wor ring and Kortenbach's Patent . 9 The demand for the
patented article in the United Kingdom was in connection with
manufacturing umbrellas in the United Kingdom almost solely for
export and sale abroad. In that case the Patentees maintained
that they had misunderstood the meaning of the Section ; as they
had been under the impression that the Act merely required them
to supply the patented article to the public in the United Kingdom
and that they had complied with the requirement by supplying it to
their depots in London, Manchester & Qlasgow. They did not
oontend that the patented article had been manufactured to an
• (1909) 26. R. P. C. 52.
(1909) 26. R. P. 0. 163.
9
Ch. VIII]
OASES
327
adequate extent in the United Kingdom ; and they asked to
be allowed time for making arrangements for the article to be
manufactured in the United Kingdom and for thereby complying
with the section. An order was made that the Patent should be
revoked forthwith. The Comptroller-General in the course of his
decision observed : — “It seems to me that, if I were to comply with
the Patentees’ request to allow them further extension of time in order
that they may manufacture the Patented article in this country,
I should be establishing a precedent to to the effect that any Paten*
tee, who has failed to comply in any way with the requirements of
the section until after an application has been made to revoke his
Patent may have an extension of time allowed him for complying
with the section, provided that he merely maintains that he has mis-
understood its meaning. I therefore order, subject to an appeal to
the Court, that the Patent be revoked forthwith and that the Paten-
tees pay to the Applicants the sum of 80 guineas in respect of their
costs.”
(iii) Ilgner's Patent. 10 As to certain points relating to onus
of proof, evidence, and procedure : also concerning concurrent
remedies.
(iv) HatschePs Patent. 11 The rulings in this case have al-
ready been noted above.
(v) Weber's Patent. 12 In that case it was admitted that the
process had been carried on exclusively abroad, but it was contended
that satisfactory reasons had been given for non-working in the
United Kingdom. The principal reasons alleged were that : —
(1) W. had made repeated and bona fide efforts to sell or licence the
patented process in this country. (2) W. had treated this country
fairly, and had not given any preference to foreign countries.
(3) The failure to work had been due to the conservatism of English
manufacturers ; and (4) W. had now entered into a bona fide contract
giving an option to purchase the Patent rights for this country.
An order was made that the patent would be revoked, not forthwith,
but at a later date (after 9 months) unless in the meantime it was
*• (1909) 26. B.P.C. 198.
11 (1909) 26. R.P.C. 1. and 22B
(1909) 26. R.P.0. 300.
328 THE LAW OF PATENTS IN INDIA [Ch. Vin
shown to the Comptroller’s satisfaction that the patented process
was carried on to an adequate extent in the United Kingdom.
(vi) Boult’s Patent . 13 In that case there was found to be a
substantial working in the United Kingdom at the date of the hearing
of the application though there had been no manufacture at the date
when the Application was filed. The Application was refused : but
without costs. The following general observations made by the
Comptroller General in the course of his decision will also be of
interest : — “In conclusion, I desire to make a few observations, on
some of the arguments addressed to me by the Patentees’ Counsel.
I understood them to maintain that it was enough for the Patentees
to show in these cases that they had made genuine and bona fide
efforts to carry out the obligations enforced on them by the Act,
and that if I am satisfied of that, I ought not to consider whether
they might not have taken more efficient or more businesslike steps
to attain this end. I cannot assent to this argument. I think that
in this case, as in every other case which is tried by a judge or jury,
the standard to be applied is what a reasonable man or a reasonable
business man should do in- the circumstances. It is not enough for
the efforts to be sufficient in the patentees’ own estimation ; they
must conform to the standard which an intelligent business-man, in
this country, would place before himself and adopt. Otherwise a
foreigner might excuse himself for doing little or nothing here, by
urging that he had done his best according to the standard of his
own country, or his own peculiar notions of business requirements.
It was also urged that there was no obligation on the part of a
patentee to show any substantial manufacture here, until a demand
for the patented article or process had arisen or been created. In
my view it is not possible to accept the argument thus widely stated.
The consideration of the adequacy of manufacture in this country
does, no doubt, depend to some extent upon the demand existing for
the article here or in neutral markets, but it does not follow that,
if there is no demand existing, there is no obligation on a Patentee
to start an industry here. If he does in fact manufacture in foreign
countries and if there is in fact a demand for the article or process
abroad, the absence of any demand here does not seem to be a valid
exouse. The Patentee must, in such cases, make an effort to create
(1909) 26. R.P.C. 383.
Ch. VIII] APPLICANT TO MAKE OUT PRIMA FACIE CASE 329
a demand here, and the establishment of an industry will in itself
help to create in many cases a demand for the article or process in
question. Stress was also laid on the fact that the article in question
was a complicated and delicate piece of mechanism, and it was
stated that many of the parts could not be properly manufactured
here. I think it possible that there may be exceptional instances in
which this is the case, but I shall be slow to believe without the
strongest evidence that manufacturers and workmen of this country
are incapable of turning out even the finest and most delicate machi-
nery. In this case I am satisfied from the evidence that the manu-
facture of the machine as a whole would present no real difficulties
to the engineering firms of this country.”
(vii) Boult’s Patent™ In that case the application was dis-
missed with costs.
(viii) Lake 9 s Patent}* In that case the patent related to * im-
provements in sound-magnifying horns for phonographs and the
like.” It was held by the Comptroller in construing the Specification
that the real invention of the patentee had been sufficiently manu-
factured in the United Kingdom : that although a sound-box was
claimed in combination there was no claim for any special form of
sound box ; and that it was not necessary therefore for the sound
box to be manufactured in the United Kingdom. That the applicant
had not discharged the onus cast upon him under Section 27(1). It
was also held that what the “patented article” is in each case must
be determined after an examination of the Specification as a whole.
Also in accordance with the decision in Ilatschek's case it was held
that the patentee should not be called upon to produce his witnesses
before the Comptroller until a prima facie case had been made out
by the Applicant. The Application was dismissed with costs.
The following observations contained in the decision may be of
interest : —
“The declarations of the Applicant, apart from allegations
as to the wholesale importation of infringing machines (which
it is suggested is acquiesced in by the Patentees) were directed
only to showing by evidence that the sound boxes used in
14 (1909) 26. R.P.C. 427.
lfl (1909) 26. R.P.C. 443.
42
330 THE LAW OF PATENTS IN INDIA [Ch. Vm
connection with the special form of sound-magnifying horn under
the Patent, are all made in the United States. There is no
evidence or suggestion that the sound-magnifying horn itself
is wholly made abroad. The Patentees’ evidence on the contrary
iB to the effect that 11,000 of these special horns have in fact
been made by Edison and Swan in this country. The Appli-
cant’s Counsel admitted that they could carry the case no further
at the hearing unless they could obtain admissions from the
Patentees’ witnesses, or were allowed to raise the whole question
of adequate manufacture under Sub-section 2, and they asked me to
allow them to cross-examine the Patentees’ witnesses. Applying the
principles laid down in Hatschek’s case 16 it appears to me that
until a prima facie case is made out by the Applicant under
Sub-section (1) of Section 27, 1 can neither allow a cross-examination
of the Patentees’ witnesses, nor ought I myself to call or examine
witnesses for the purpose of assisting the application. When a
prima facie case has been made different considerations may no
doubt arise, and the questions of adequate working, or “sufficient
reasons” under Sub-section (2) may have to be investigated.
In this case, as the Applicant produced no further evidence
in support of his case and was not prepared to call the Patentees’
witnesses as his own, I have to decide on the Declarations before me,
whether the Applicant has made out a prima facie case in support
of the allegations that the patented article is mainly or exclusively
manufactured abroad. The only evidence that I can find relates to
the manufacture in the United States of the sound boxes used in
connection with the patented horn, and if a sound box were the
“patented article” it is possible that a prima fade case might be
raised, I have therefore to decide what the patented article really is ;
and whether the evidence relating to the manufacture of the sound
boxes abroad is relevant to the issues raised in this case. It appears
to me that 1 can only decide this question by a careful construction
of the Patentees' Specification. It has been laid down by numerous
authorities that a Specification must be construed like an ordinary
legal document. It must be construed as a whole, taking into con-
sideration the title, the description, and the illustrations which are
annexed. • Particular Claims are not to be isolated but are to be
(1909) 26 K, P. C. 238.
Ch. VUI]
MEANING OF “PATENTED ARTICLE”
331
.read in connection with the description &c , of the invention, and
bearing in mind the existing state of the art of which the Court is
assumed to have knowledge.”
(ix) Bremers db Hogner’s Patents. 11 It was held by Parker J.
in effect that the Patents Act of 1907 was not intended to penalise
want of success where a Patentee had done his best and that their
want of success up to that time in establishing their industry had
been due to circumstances beyond their own control and not to
the manner in which they had exercised their rights conferred upon
them by the Patent in question. The order prayed for rovocation
was refused.
(x) Kent’s Patent. 16 On the facts of that case the Applica-
tion for revocation was refused.
(xi) Osborn’s Patent. 1 9 On the facts of that case a defence
based on absence of demand for the Patented article in the United
Kingdom was held to be a sufficient reason ; and the application for
revocation was dismissed.
(xii) Jottrand’s Patent.* 0 In that case the application was
dismissed : but it should be noted that the Comptroller emphasised
during his decision that on that application, under Section 27 of
the English Act, he had no power to make any order except for
revocation and had no power as an alternative remedy to make an
order for compulsory licenses. Ho pointed out that many of the
arguments addressed to him appeared to be more suitable for a
Petition for a compulsory license. In this respect in reading such
a case the English law as it then stood must be distinguished from
the present Indian Law under which it would be open in such a
case for an order for a compulsory license to be made.
(xiii) Fell’s Patent} 1 In that case though there was undoubt-
edly some manufacture within the United Kingdom, it was held that
'no sufficient reasons had been given for the earlier inaction of the
Patentees or for the lateness of the attempt they had made. The
Patent was ordered to be revoked forthwith.
*» (1909) 26. R.P.C. 449.
*• (1909) 26. R.P.C. 666.
19 (1909) 26. R.P.C. 819.
*• (1909) 26. R.P.O. 830.
(1910) 27. R.P.O. 25.
91
333
THE LAW OF PATENTS IN INDIA
[Ch. VIII
(xiv) Mercedes Patent. 2 8 This was an application on the part
of Fiat Motors Ltd. for the revocation of seven patents of the
Mercedes Daimler Motor Co., Ltd. In this case the chief point in
dispute was whether a manufacture in the United Kingdom by
infringers, apart from or in addition to any manufacture by the
Patentees or their licensees, can be relied on by the Patentees in
establishing an adequate extent of manufacture of the “patented
article” in the United Kingdom. It was held that the term “patented
article” (in Section 27(1) of the English Act of 1907 means an article
which is the subject of a British Patent and is manufactured in
accordance with the Specification or by means of the process therein
described, by whomsoever manufactured, and that consequently
manufacture by infringers in this country must be taken into
account in favour of the Patentee under the Section 27(1). The
decision of the Comptroller refusing the application for revocation
was upheld on appeal by Parker J.
It is submitted, as the wording of the Indian Act is the same
as that considered in that case, the principle is equally applicable
in British India.
(xv) Taylor’s Patent . 8S On the particular facts of that case
on appeal from the Comptroller’s decision after considerable argu-
ment it was held by Parker J. that no order of revocation should be
made. It was pointed out however by the Court that the dismissal
of the application would not prejudice any future application for
revocation if, when circumstances had altered, there was or conti-
nued to be a neglect to work the invention within the jurisdiction.
The cases above referred to are all cases which arose in con-
nection with Section 27 of the English Act of 1907 and will there-
fore be equally applicable generally on questions of construction
arising on Section 23 of the Indian Act of 1911 which is now
operative in British India.
Compulsory Licenses.
Since the amendment effected by the Indian Act of 1930, com-
pulsory licenses may be obtained equally under Section 22 and under
Section 23 ; just as an order for revocation may be made equally
under section 22 and section 23.
** "7l910) 27. R.P.C. 762.
(1912) 29. R.P.C. 296.
*»
Ch. VIII] AT WHAT STAGES OBJECTIONS MAY BE RAISED 333
As to “patented article”.
The term “patented article” has been construed so that it in-
cludes articles manufactured by persons other than the patentee
or his licensees : as was held, for example, in the application for
revocation of the Mercedes Patent. 24
At what stages objections for non-working or non-supply may be
raised in British India (and in what form).
Since any objections for non-working or non-supply cannot be
thought of until a patent has been granted to the patentee against
whom the complaints are to be made, it is obvious that, unlike other
objections, whereby the invalidity of the patent may be urged, these
objections cannot be made at any stage except after the grant. These
objections do not go to the root of the patent in the sense that if
these objections arc established it results in the patent having been
bad ab initio : if these objections are established it results in what
has till then been a good patent being terminated and revoked.
Under the Indian Act of 1911 it is provided that no order on
an objection for non-working or non-supply can be made until after
four years from the date of the patent (under Section 22(4) and
Section 23(1). On the wording of Section 22 it seems possible
that a petition could be presented at any time after grant, though no
order could be made on it until after 4 years after grant : under
Section 23 it is clear that no petition can be presented until 4 years
after grant.
In all cases the objections are raised by way of Petition to
H. E. the Governor-General in Council under those sections ; II. E.
the Governor-General in Council may refer petitions under Section
22 to the High Court : petitions under Section 23 arc decided by
II. E. the Governor-General in Council in all cases.
These objections as to non-working or non-supply can also be
taken as a defence in an infringement suit by virtue of Section 29(2)
of the Indian Act of 1911. 2 *
a4 See further comments above at page 332.
*• See Fletcher Moulton p. 304 : and See Thermos Ltd. v. Isola Lid. (1910)
27. R.P.0. 195 (O.A.) ; Vidal Dyes Syndicate v. Read Holliday <t- Sons Ltd.
(1911) 28. R.P.O. 323. (C.A.) ; Saccharin Corpn, Ltd. v. National Saccharin
Cay. Ltd. (1909) 26. R.P.C. 737 & (1910) 27. R.P.0. 354 (C.A.) Colman v. Cook &
Co. (1912) 29. R.P.G. 175 ; and cf. Badische Anilin etc. v. IV. O. Thompson &
Coy. Ltd. (1904) 21. R.P.C. 473 (prior to the 1907 Statute).
CHAPTER IX
PROCEDURE RELATING TO APPLICATIONS FOR PATENTS
IN BRITISH INDIA— TO WHOM A PATENT MAY BE
GRANTED— APPLICATIONS BY THE TRUE AND FIRST
INVENTOR: ORDINARILY OR AS COMMUNICATEE
FROM ABROAD— BY HIS LEGAL REPRESENTA-
TIVE— BY HIS “ASSIGN”— RECIPROCITY
APPLICATIONS— QUALIFICATIONS OF THE
APPLICANT— THE STAGES OF PROCEDURE
BETWEEN APPLICATION AND GRANT OF
THE PATENT (WHEN UNOPPOSED)—
OBJECTIONS FROM THE PATENT
OFFICE PRIOR TO ACCEPTANCE
OF THE APPLICATION.
To whom a Patent may be granted in British India : qualifications
of the Applicant.
Under Section 3 of the Indian Patents & Designs Act of
1911 it is provided as follows : — '
“3(1) An application for a patent may be made by any person
whether he is a British subject or not, and whether alone or jointly
with any other person.
(2) The application must be made in the prescribed form,
and must be left at the Patent Office in the prescribed manner.
(3) The application must contain a declaration to the effect
that the applicant is in possession of an invention, whereof he, or
in the case of a joint application one at least of the applicants,
claims to be the true and first inventor or the legal representative
or assign of such inventor and for which he desires to obtain a
patent, and must be accompanied by a specification and by the
prescribed fee.
(4) Where the true and first inventor is not a party to the
application, the application must contain a statement of his name.
Ch. IX] APPLICATION BY TRUE AND FIRST INVENTOR
335
and such particulars for his identification as may be prescribed,
and the application must show that he is the legal representative
or assign of such inventor.”
Therefore it follows that either the applicant (or at least one
of the applicants when there are more than one) must be what the
law regards as “the true and first inventor" or the applicant (or
at least one of the applicants when there are more than one) must
be either the legal representative or what is described in the
Section as the “assign" of the true and first inventor.
As to application by the true and first inventor himself.
An underlying principle of all Patent Laws in all countries
and of all systems of Patent administration has been the reward
of the true and first inventor of a new invention, by the benefits
of a monopoly to be granted to him rather than to anyone else.
The true and first inventor therefore in India, as in the United
Kingdom, has always been entitled to make the application himself,
in his own name, for the grant of a Patent.
The question who is entitled to describe himself as the “true
and first inventor,” and the meaning of the term, has already been
discussed and defined in a preceding chapter. 1
The form of application to be used in such case is Form
No. 1 of the forms given in the Second Schedule of the Indian
Patents & Designs Act of 191 1. 2
It is to be observed that if a person who desires to make
such an application is, at the time, in person outside British India,
there is nothing to prevent him availing himself of the facilities of
the post in order that he may himself have the advantages of being
in the position of a true and first inventor within British India :
and there is nothing to prevent such a person in this way from
making the application himself in his own name : signing the re-
quisite application form himself abroad, and posting it, either direct
to the Indian Patent Office or to his Patent Agent in India to be
presented by the Patent Agent at the Indian Patent Office.
In the latter case the Patent Agent will present the applica-
tion at the Patent Office in Calcutta on behalf of and as agent for
1 See Chapter VII p. 248 et seq.
* See Appendix No. 5 below.
336
THE LAW OF PATENTS IN INDIA
[Ch. IX
the true and first inventor, in whose name the application will be
made. In either case the Patent if granted will be granted in the
name of the person who is actually abroad. The rules require
that the applicant will give an address for service within British
India (i.e. Rule 4). s These rules will in all respects be complied
with if the true and first inventor, though himself abroad, gives
the address of his Patent Agent in British India.
As to application (by a person who is the true and first inventor)
on a communication from abroad.
As previously noted, a person, being himself in this case in
British India, may still be the true and first inventor for all pur-
poses of Patent Law (even though he has in common parlance him-
self invented nothing) if he, in British India, has only acquired
knowledge of the invention by a communication from another
person who is abroad.
In such a case he would appear to be neither doing anything
wrong nor stating anything inaccurate if he were to make the
application on Form No. 1, which is the ordinary form for use
where the application is made by the true and first inventor.* For
reasons of convenience however, in order to distinguish cases where
the true and first inventor is the true and first inventor only by
reason of a communication from abroad, a separate form, being
Form No. IB is prescribed under the Act for use by an applicant
for grant of a Patent on a communication from abroad. This Form
No. IB is the proper form for use in these cases. 6 That there
is no question but that the applicant in this case is making the
application in the full capacity of being himself the true and first
inventor, is made clear by the retention in the form of the same
words : — “that I (or we) claim to be the true and first inventor(s)
thereof.” Indeed the two forms in both cases are word for word
the same except that Form IB contains, after the words “that I am
(or we are) in possession of an invention for ” the
additional words “which invention has been communicated to me
(or us) by ” 8
8 Bee Appendix No. 5 below.
4 See Avery’ 8 Patent (1887) 36 Ch. D. 307 at p. 316 ; Terrell (8th edn.) p. 15.
8 See Appendix No. 5 below.
8 As to cases where the invention is partly originally invented and partly
communicated ; Moser v. Marsden (1893) 10. R. P. C. 350 at p. 359.
Ch. IX] APPLICATION ON COMMUNICATION FROM ABROAD 337
The application for Patent is in all these cases made, of course,
in the name of the communicatee ; and the Patent,' if granted, is
granted directly in his name.
The facilities of this method of application may be regarded
as being conveniently available to assist especially in the progres-
sive development of new industries and manufactures in British
India and to foster the introduction, wherever beneficial, of new
commercial, agricultural or industrial processes and machines into
this country. It being an established principle of Patent Law that
the person who is the communicatee on a communication from
abroad of an invention is himself the true and first inventor within
British India, it is immaterial who is the communicator outside
British India. It is true that the form of application requires that
the applicant, the communicatee, shall state the name of the commu-
nicator ; but this provision would appear to have been inserted
merely for purposes of record which may serve thereafter as an
index of the bonafides of the application, in the event, later on,
of any dispute arising to which the origin of the communication may
be relevant. The communicatee in no respect depends, for his status
of true and first inventor or for his right to make the application, on
any status or rights previously possessed by the communicator.
This method of application ( i.o. on a communication from
abroad) is also commonly used where there is a person abroad who
is interested to obtain a Patent in British India, when he is content
that the actual grant may be made in the name of another person,
such as his Patent Agent, who is resident iu British India. In a
case where a Patent Agent thus obtains a Patent in his own name, as
communicatee, he will be under a legal duty to hold the Patent in
trust for the benefit of the person abroad. In most such cases an
assignment will be arranged for of the Patent after grant by the
Patent Agent in British India to the person abroad, who will there-
after become the registered owner of the Patent. This method
of application has in such cases the advantage that once the person
abroad has communicated the particulars of the invention to the
Patent Agent in British India there is no need to be troubled with
any of the subsequent proceedings relative to the obtaining of
the grant.
This method is particularly useful also, in cases where the
43
338
THE LAW OF PATENTS IN INDIA
[Ch. IX
person interested in the obtaining of the Patent is abroad, where
it is of urgent importance to save time in making the application ;
and where it is not feasible to obtain the preparation and signature
of the application Form by the person who is actually abroad in
sufficient time to enable the papers to reach the Indian Patent
Office by a specific desired date. In special cases it is even occa-
sionally possible for the necessary communication of the invention
to be made by cable by the person abroad to a Patent Agent in
India who will then lodge the necessary application in the capacity
of a communicatee.
It may be noted however that in the use of this method of
application by a person, who is abroad, and desires to have the
benefit of an Indian Patent to be thus granted in the name of another
person as communicatee, -he will be more amply safeguarded, where
such other person is a Patent Agent, in the United Kingdom than
he will be in British India. For in the United Kingdom there is
the direct protection afforded by the Rules of the Chatered Institute
of Patent Agents of the United Kingdom which expressly forbid
Patent Agents (who are in the United Kingdom necessarily fellows
of that Institute) from themselves having any interest in a Patent :
while in India, there being no corresponding Institute of Patent
Agents of India and no such Rules, this protection is generally
speaking absent ; that is to say except in so far as a person practis-
ing in British India may be a Fellow of the Institute of Patent
Agents of the United Kingdom and to that extent be governed by
the Rules applicable in the United Kingdom.
As to Application by a legal representative of the true and first
inventor.
In the United Kingdom even prior to the Act of 1932, it
appears to have been the practice of the Patent Office in the United
Kingdom in a case where an application for a Patent has been made
by the true and first inventor and he has died after application but
before grant, to make the grant in the name of the legal personal
representative of the deceased ; if the Patent Office has had notice
of his death. 7
In the United Kingdom, further, by virtue of the special pro-
1 See Fletcher Moulton p. 253.
Ch. IX.]
APPLICATION BY LEGAL REPRESENTATIVE
339
visions of Section 43 of the English Acts of 1907-1932 it is provided
that “if the person claiming to be inventor of an invention dies
without making an application for a patent for the invention, appli-
cation may be made by, and a patent for the invention granted to
his legal representative.” By Section 43(2) further provision is made
that in such case the legal representative must make a declaration
“that he believes the deceased to be the true and first inventor of the
invention.” Also under Section 93 of the English Patents &
Designs Act 1907-1932 it is provided that the word “inventor” and
“applicant” is to include the legal representative of a deceased
inventor or applicant. The result is that it is clear that in the
United Kingdom, in the event of the death of the true and first
inventor before application, application may then be made by his
legal representative.
The position is substantially the same in British India.
Under the wording of Section 3, quoted above,* express provi-
sion is made for an application for the grant of a Patent being
made by a person who is the legal representative of the true and
first inventor.
The proper form is then Form No. 1A. 9
For the purposes of the Patent Office, in order that a person
may establish that ho is the legal representative of the true and first
inventor, all that is necessary is for him at the time of lodging the
application, to “produce for inspection the probate of the will or the
letters of administration of the estate of the inventor or a certified
copy of such probate or letters, or such other evidence of his title
as the Controller may require.” 1 0
It may be noted that in the case of an application for Patent
being made in the name of B in his capacity as legal representative
of A, while the Patent if granted will in every case be granted in the
name of B, yet it may frequently happen that B will be under a legal
duty to hold the Patent for the benefit of A’s estate. If necessary
B may assign the Patent itself after grant to the person or persons
who are shown to have become entitled to it on A’s death in succes-
sion to him.
* See page 334.
* See Appendix No. 5 below,
i. e. Rule 10(3) : see Appendix No. 5 below.
340
THE LAW OF PATENTS IN INDIA
[Ch. IX
It would appear that in a case where application is made by a
person abroad as legal representative of the true and first inventor,
such person equally as in a case of an application by the true and
first inventor himself, may adopt the facilities afforded by the Post
Office, if such person desires to make the application in his own
name » either posting the requisite form of application direct to the
Indian Patent Office in India or to a Patent Agent in India for
presentment by him to the Indian Patent Office.
As to application by an “assign” of the true and first inventor.
In this respect until the year 1932, there was a marked
difference between the English and the Indian Acts in regard to the
persons by whom application for a Patent might be made.
In the United Kingdom prior to 1932, all along, save for the
exceptional provisions concerning applications after the death of the
true and first inventor by his legal representatives, it had never been
open. to any person who was not himself the true and first inventor
to apply for the grant of a Patent in his own name.
In British India ever since the Act of 1859 (see Secs, 4 and 38
thereof) and under all sub-sequent Acts, provision has all along
existed for an application being made by a person who was an
"assign of the true and first inventor.”
In the United Kingdom by an amendment made in the British
Patents & Designs Act of 1932, provision has now for the first time
been made allowing the grant of a Patent to be made to a person
who is an "assign ”. The result is that the position in this
respect is, generally speaking, in both countries now for the first
time the samo.
This being one of the few occasions on which the English
Statute has been altered so as to follow the Indian Act, it may there-
fore be supposed that some practical benefit has been found to exist
in a provision allowing the application to be made by a person
who can call himself an assign of the true and first inventor. 11
11 The cause of the amendment in England appears to have been due to
certain matters relating to international obligations with foreign countries. It
appears that in the United Kingdom the application is still required to be made in
the name of the true and first inventor, though the Patent may be granted from
the first in the name of the person who is the “assign” : see Sec. 1 (unaltered) of
the English Acts 1907-1932 and Sec. 12 (as amended by the 1932 Act).
Ch. IX]
APPLICATION BY AN ASSIGN
341
At the same time it may be observed that it is somewhat
difficult to define the meaning of the phrase “assign of the true and
first inventor”, used as it is in regard to a situation prevailing before
any grant of Patent has come into existence. Clearly, it is submitted,
there can properly speaking be no property either in English law or
in Indian law in a bare invention or idea prior to the grant of a
Patent. Therefore there can be no one, it is submitted, legally
speaking to whom as the so*called “assign” any right of property in
the invention before the grant of Patent can be transferred. It
would seem therefore that by this phrase no reference can be inten-
ded to a person who is the legal representative or assign in respect of
the invention so as to be a transferee thereof. A person may exist,
of course, who is the legal representative of a deceased inventor in
general : and it can be understood that by Statute such a person is
granted a right of making application for a Patent after the death
of the original true and first inventor. ' But the word “assign” does
not seem capable of bearing such a meaning. For there cannot, one
supposes, be a person who is the “assign” in general of another per-
son dead or alive. He must, it would seem, bo an assignee of certain
particular rights. If so, then of what rights ? A mere idea, which
is all that an invention before the grant amounts to, is not a chose
in action or anything of such a nature as to be capable, it is sub-
mitted, of assignment under the Indian Transfer of Property Act :
it is submitted it is not a thing capable of assignment either under
Indian or English law. It might be said that what is meant by the
phrase is the person who is the assignee from the true and first
inventor of the right which the true and first inventor had to make
an application for Patent at the Patent Office. It would seem ex-
tremely doubtful however whether any such right ever exists : or if
it does exist whether it can from the nature of things be assignable.
It would seem on the contrary from its nature to be a right personal
to the true and first inventor. However the phrase has been used
in Patent Acts for many years in India ; and the system of allowing
a nominated substitute of the true and first inventor to apply instead
of the true aud first inventor has apparently been worked with
success in many countries. It is submitted that the word assign
then means nothing more than a “nominee” > or a person to whom
the original true and first inventor has given express consent for his
making an application for a Patent in respect of a particular inven-
342
THE LAW. OF PATENTS IN INDIA
[Ch. IX
tion in place of the original true and first inventor himself, who at
the same time undertakes not to make any application for the Patent
himself- For it is comprehensible that the true and first inven-
tor may agree by personal contract that he will not make any appli-
cation in his own name and that he will not take any objection
against another person’s making an application, provided that other
person is allowed in law to do so. And it is comprehensible that by
statute that other person may be expressly allowed to make such an
application and to receive a grant of a Patent in his own name.
Otherwise for any wider meaning than this, the word “assign” in
this context becomes somewhat incomprehensible. 12
Whether a transaction which is to be relied on as a so-called
“assignment” within the meaning of Section 3 of the Act, is required
to have all the requisites of a valid personal contract, such as good
consideration, or whether a bare expression of authority from the so-
called assignor even without' any consideration is sufficient, docs not
appear to have been decided : nor whether such expression of autho-
rity is required to be in writing or oral in order to be binding.
It is submitted that. generally speaking in order to constitute
an assignment within the meaning of Section 3 of the Indian Patents
& Designs Act, such as to be in law binding on the person making
it, there will be required to be a contract between the so-called
assignor and so-called “assignee” with good consideration : that such
a contract may be either oral or in writing : but if it be in writing
that it should then be stamped with a twelve annas stamp under
Article 5(c) of the Indian Stamp Act. On the other hand it might
well be in a particular circumstances, where the true and first inven-
tor had given a bare expression of consent to another person to make
application for a Patent and that other person had acted thereon and
altered his position accordingly, that as between them the true and
first inventor would be estopped on general principles of estoppel
from denying that the other person was an “assign” within the
meaning of the Section.
The proper form to be used in the case of an application for a
Patent where the applicant is an ‘assign” of the true and first inven-
19 See also Edmunds at p. 196 : where it is pointed out that “an inventor
has by law no property in his invention, and no interest in it recognizable by
law except under a patent.” He refers also to Hindmarch 233.
Ch.IXl
PROOF OF RIGHT TO APPLY
343
tor is the same Form No. 1A as is used by an applicant who is a
legal representative of the true and first inventor.
For the purposes of the Patent Office, in order that a person
may establish that he is entitled to make an application for a Patent
in the capacity of an “assign of the true and first inventor,” all that
is required is in effect that he should either “produce the original
deed of assignment or other document from the true and first inven-
tor under which he is enabled to apply for a Patent” or have “the
application itself endorsed by the true and first inventor in the
presence of two witnesses with a statement that the said inventor
agrees that the application shall be made without his name as an
applicant for patent.” 13
The form of such endorsement, which is couched as a letter of
authority addressed to the Controller, is given as a supplement to
Form No. 2 in the Second Schedule of the Act ; and is worded
as follows : —
To
The Controller of Patents and Designs,
1, Council House Street, Calcutta.
Endorsement by Inventor (see Rule 10(2)).
I (or we)
referred to on the reverse of this document as claiming to be the
true and first inventor(s) agree that the said application be made
without my (or our) name (s) as (an) applicant (a) for a patent.
Dated this day of 19
(Signed)
Signature of two witnessess.
1 .
2 .
This method of application is commonly adopted and is parti*
cularly useful where it is desired that a Patent should be granted in
18 Rule 10 (2) See Appendix No. 5 below.
344 THE LAW OF PATENTS IN INDIA [Ch. IX
the name of a limited Company from the first. A limited Company
though it has not the capacity to apply as a true and first inventor
itself, is yet fully capable of applying as an assign of the true and
first inventor for a grant of a Patent in its own name.
The method is also similarly available where the grant of the
Patent is desired to be obtained in the name of a partnership firm
from the first.
Instances frequently arise where an employee of a company or
of a firm by reason of the terms of his employment is bound to make
over all benefits of inventions achieved by him to the company or
firm by whom he is employed. In such a case though the true and
first inventor is the employee, the requisite application for Patent
may be made under Form No. 2 by the Company or firm by whom
he is employed, in the capacity of his assign.
Foreign Companies.
A practice appears to be in existence, which is an extension
in a sense of the course last mentioned, of using this method of
application to enable limited companies registered and carrying
on business only outside British India to make application for
Patents in British India in circumstances, where the so-called assign-
ment has been outside British India from an employee of the
company who is working outside British India, whose name is
given as the purported true and first inventor : the application for
Patent and the grant of the Patent, if granted being in such cases
made in the name of the foreign company itself from the first.
It is difficult to see how such applications arc justified. For tho
employee, who may well have been a true and first inventor for
the purposes of the Patent Laws of the country in which be resides
and for the purposes of the application for, and grant of, a Patent
of that country, is in no sense a true and first inventor in respect
of any invention for the purposes of Indian Patent Law : since he
has neither invented his invention in British India nor imported
it into British India and has never himself been in, or come to,
or communicated with, British India. And if he is not such true
and first inventor, obviously there can be no assignment from him
as true and first inventor ; and obviously there can be no person
who is entitled to be described as an “assign of the true and first
inventor” by virtue of his name in respect of any invention.
Ch. IX]
FOREIGN COMPANIES
345
No doubt it is immaterial whether the transaction relied on
as the so-called assignment takes place in British India or outside.
But it is submitted that if an application is to be made by an
applicant in the capacity of an assign of the true and first inventor,
this postulates the existence of a person who was in fact “the true
and first inventor” of the particular invention in the proper sense
of the phrase in accordance with the principles of Indian Patent
Law : that is to say the true and first inventor in British India.
There would seem on the other hand nothing to prevent a
foreign company, in this class of case, from itself acting as the
communicator from abroad of the invention, the Indian Patent for
which may then be applied for and obtained by the Patent Agent in
British India of the company or by any other suitable person as on a
communication from abroad in the name in the first instance of such
Patent Agent or other person : and the foreign company may obtain
ownership thereafter of the Patent by assignment of the Patent itself
after grant. Or, if the foreign Company is especially desirous of
obtaining the grant from the first in its own name, there would seem
nothing to prevent it from achieving this end in the following
manner: — viz. for the company to arrange for the communication
of the invention to the Patent Agent or any suitable person in
British India, who thereby becomes the true and first inventor of
the invention in British India, and then for the application for the
Patent to be made in the name of the foreign company itself as an
assign from such person as true and first inventor. Either of such
courses will avoid the difficulties which may otherwise inevitably
arise at a later stage in the event of any attack on the Patent on
the ground that the person mentioned in the original application
was not in truth the true and first inventor in British India.
In cases where the person desiring to make the application in
the capacity of an assign of the true and first inventor is abroad (as
in cases of applications by foreign companies such as those referred
to), he makes the application by availing himself of the facilities of
the post, either posting the application direct to the Indian Patent
Office in British India or to a Patent Agent in India for presentment
by him to the Indian Patent Office on behalf of the applicant. It is
necessary for the applicant, though abroad, in such cases to sign the
application from himself, which he may do abroad.
44
346
THE LAW OF PATENTS IN INDIA
[Ch. IX
Who may apply for the grant of a Patent.
Any person who is entitled to call himself the true and first
inventor, (except, possibly, in- a case where he has given up his
rights to another person so as to constitute that other person an
“assign” within the meaning of Section 3 of the Indian Act of 1911),
is entitled to make an Application for a Patent. Where there may
have been more than one person who is entitled to call himself the
true and first inventor, as where there have been joint true and first
inventors, any one of such persons is entitled to make an application
for a Patent. Where the true and first inventor of an invention has
died without having made an application for the grant of a Patent
in respect of his invention, any person who is entitled to describe
himself as his legal representative is entitled to make an application
for the Patent. Presumably also where there are in existence more
than one of such persons, any one of them may make the applica-
tion. Where there has been a transaction amounting to an assign-
ment within the meaning of Section 3 of the Indian Act of 1911, the
person who is entitled to call himself an “assign” of the true and
first inventor is entitled to an application for a Patent. Presumably
if there were to be an “assignment” within the meaning of the section
to two or more persons (whether jointly or otherwise) any one of
such “assigns” would be entitled to make an application for a Patent.
It would appear at first sight, considering the usual implications of
the word “assign”, that in a case where there has been a transaction
amounting to an assignment within the meaning of Sec. 3 of the
Indian Act of 1911, then the original true and first inventor is no
longer entitled to make an application himself for the Patent in
question. But in view of the doubtful meaning (already referred to)
of the word “assign” as used in the Section, if the true position is
that in law no rights other than personal rights between the so-
called “assignor” and the so-called “assignee” are created by such a
transaction, then it would seem to follow that, apart from any
personal remedies available against him by his “assign”, there is
nothing in law to prevent the original true and first inventor himself
making an application in his own name even in such a case.
Subject to the foregoing remarks any person who is entitled to
call himself the true and first inventor, or any person who is entitled
to call himself the legal Representative or Assign of the true and first
inventor is entitled to make an application for the grant of a Patent.
Ch. IX] ABSENCE OF DISQUALIFICATIONS 347
Other persons besides the true and tirst inventor may be
joined.
Provided one of the applicants is a true and first inventor, or a
legal representative of the true and first inventor, or an assign of the
true and first inventor, there is no objection to the name or names
of an other person or persons being joined with his in the
application.
In this way it is at times found convenient in making an
application for a Patent in cases where an employee of a limited
company or of a partnership firm is the true and first inventor, but
it is desired that the company or firm by whom such person is em-
ployed should also have an interest, as a grantee, in the Patent from
the first, for the application to be made out in the names of both the
employee and the company or firm as joint applicants, while stating
that the employee alone is the true and first inventor. In such case
the grant of the Patent, if made, will be made in both the names of
the employee and of the company or firm.
Absence of disqualifications for applicants for Patents.
Apart from what is necessary for the Applicant to enable him
to bo in a position to make the requisite declaration as already ex-
plained, there are no other legal disqualifications which will debar a
person from being entitled to apply for and to receive the grant of a
Patent. Ordinary legal incapacity such as might prevent the person
from making a valid contract does not affect the matter.
Application by infants.
The words “any person” which occur in Section 3 of the Indian
Act of 1911 in themselves might seem to show that a Patent can be
applied for by or for an infant. But apart from this it seems that
there has never been any suggestion under the Patent Law in
England that a grant of a Patent could not be made to an infant.
It has been decided that a Patent may be granted to an infant :
See Cheaven v. Walker 1876. 5 Ch. D. 858. 14
Section 74 of the Indian Act of 1911 corresponding to Section
83 of the English Act expressly provides fordeclarations being made
on behalf of an infant by the guardian of the infant. The section
14
Of. Terrell (8th edn.) p. 12.
848 THE LAW OF PATENTS IN INDIA [Ch. IX
clearly covers the making by an infant of an application for a Patent
which may be granted to the infant.
It will be noted that the Section also provides for a Petition
to the Court and an order being made thereon appointing the
requisite guardian for the infant for the purpose.
Applications by married women.
There is nothing to prevent a married woman being a
patentee in British India : or from making an application in her own
name.
In England the Married Women’s Property Act 1882 expressly
recognises such right of a married woman as to make it clear
that she is entitled to make an application in her own name for a
Patent.
Applications by lunatics.
Similarly there is nothing to prevent a Patent being granted to
a lunatic.
Under Section 74 of the Indian Act of 1911 his committee may
make the application for him.
As in the case of an infant, the section provides for the neces-
sary Petition being made to the Court and the necessary order being
made thereon for the appointment of the Committee.
Applications by Corporations.
It has been decided in England that a Corporation cannot
apply as the true and first inventor for a Patent : presumably
beoause it is considered that a Corporation, such as a limited
company, can have no brain or inventive faculty of its own. 16 It has
been held however, as already mentioned earlier in this chapter, that
a Corporation may be the grantee in its own name of a Patent where
the invention has been communicated to it from abroad : also where
there has beon a transaction amounting to an assignment from the
true and first inventor before grant within the meaning of Section
3 and the Corporation has made the application as an assign from the
true and first inventor.
1 ‘ See Bloxam v. Elsoe, 1 Car & P 558 at p. 564 : Garey’s Application
(1889) 6. E. P. C. 552 ; Societe Anonyme da Generateur du Temple’s Applica-
tion (1896) 13 B. P. C. 54.
Ch. IX]
APPLICATIONS BY GOVERNMENT SERVANTS
349
A similar practice is in fact followed at the Patent Office in
British India. And in British India while an application for patents
by a company purporting to be the true and first inventor will not be
entertained, yet not only may a company apply as a person to
whom an invention has been communicated from abroad but it may
also in British India apply and receive a grant as the Assign of the
true and first inventor.
Applications by Government Servants.
It is provided by Rule 10(1) that : — “If the true and first
inventor or any applicant for a patent is in the service of the Crown,
he shall disclose that fact in the application and shall state the office
which he holds.”
Government Servants in British India are in most instances
affected by certain regulations of Government which have the effect,
as a term of their contract of service or otherwise, of limiting to a
considerable extent the right which they would otherwise have as
private individuals of taking out, and enjoying the privileges of,
Patents. In British India Government Servants are in the majority
of cases governed directly by the Fundamental Rules or by other
Rules for their particular service which either contain Rules similar
in many respects to the Fundamental Rules or expressly provide that
the Fundamental Rules shall be applicable to members of that parti-
cular service.
The current provisions of Rules No. 48A and 48B made cffcct-
tive from 27th June 1933, together with Rule 48 of the Fundamental
Rules which immediately precedes these, are as follows : —
“48. Any Government servant is eligible to receive without
special permission (a) the premium awarded for an essay or plan in
public competition or (b) any reward offered for the arrest of a
criminal or for information or special services in connection with
the administration of justice ; and also any remuneration or reward
payable under any special or local law or in accordance with the
provisions of any Act or regulation or rules framed thereunder.
48 A. A Government servant whose duties involve the carrying
out of scientific or technical research shall not apply -for or obtain,
or cause or permit any other person to apply for or obtain, a
patent for an invention made by such Government servant save with
350 THE LAW OF PATENTS IN INDIA [Ch IX
the permission of the Local Government and in accordance with
such conditions as the Local Government may impose.
48B. If a question arises whether a Government servant is a
Government servant to whom Fundamental Rule 48- A applies, the
decision of the Local Government will be final.” 14
These Rules No. 48A and 48B have also been made applicable
by H. E. the Governor-General in Council with effect from 27th
June 1933 to those services in respect of which power to make rules
is delegated to him, in exercise of the powers conferred on him by
Rules 33(2), 37, 42 and 44(d) of the Civil Services (Classification, Con-
trol and Appeal) Rules and with the previous sanction of the Secre-
tary of State in Council in accordance with Rule 9 of those rules. 17
The General Instructions concerning the mode of application
of Rules No. 48A and 48B are worded as follows : —
“General instructions for regulating the grant of permission
for the taking out of Patents by Government Servants whose duties
involve the carrying out of scientific or technical research.
1. Application for permission under rule 48-A of the Funda-
mental Rules should be made by the Government Servant making an
Invention to the head of his Department or, if he is himself the head
of the Department, to the Department of the Local Government
under whom he is serving. v
2. The head of the Department should deal with the applica-
tion confidentially and with expedition so that the inventor may not
be prejudiced by delay in making his Application at the Patent
Office, and should forward it with his recommendations to the
Department of the Local Government under whom he is employed.
3. Permission may be granted by the Department of the
Local Government to the Applicant without any restriction if the
Invention has no connection with the Government servant’s official
duties and has not resulted from facilities provided at Government
expense.
11 See G. I. F. D. Notification No. F. 11(21) R. 1-33 dated 1st November
1933.
1 7 See the Post & Telegraphs Compilation of the Fundamental and the
Supplementary Rules (2nd edn.) : and the 31st List of Corrections to the same
No. 555.
Ch. IX]
INSTRUCTIONS
331
4. If the Invention ia made in the course of the Government
Servant’s official duties or has resulted from facilities provided at
Government expense, then —
(a) if the Invention is of such general interest and utility
that the public interest will be best served by allowing
the public a free use of the Invention, the Application
for taking out a Patent should be refused and the
Invention should be published. An ex gratia payment
should ordinarily be made to the Inventor as a reward in
all such cases ;
(b) if the Invention is not of the kind mentioned in (a) but
is of sufficient public utility as is likely to make its
commercial exploitation profitable, the Inventor should
be directed to take out a Patent and to assign his rights
under the Patent to the Secretary of State for India
in Council. In all such cases, the Inventor should be
rewarded either by a suitable lump sum payment or
by a liberal percentage of the profits made by Govern-
ment in connection with the Invention ;
(c) in other cases, the Inventor should be allowed to take
out a Patent for his own benefit subject to his under-
taking to permit Government the use of the invention
either without payment or on such terms as they may
consider reasonable.
5. When the Invention has been assigned to the Secretary of
State for India in Council under paragraph 4(b) above, the Depart-
ment of the Local Government concerned may exploit the Patent
themselves, or —
(a) advertise the Patent and grant Licenses on payment to
manufacturers, or
(b) sell the rights under the Patent to a firm or to a private
person.
6. In order to secure reasonable uniformity of practice and to
secure for Government the full benefits of Inventions, the Controller
of Patents and Designs should ordinarily be consulted before any
awards are made under clauses (a), (b) and (c) of paragraph 4 above
352
THE LAW OF PATENTS IN INDIA
[Ch. IX
or steps are taken for the exploitation of the Patents under para-
graph 5 above" 18
Applications by Legal Representatives.
This aspect of the matter has already been referred to. 19
Applications for patents in India under Reciprocal arrangements.
It will be observed that there are other official forms provided
for use in cases where the application for the patent is made under
the Reciprocal Arrangements with the United Kingdom and certain
other countries and states ; which is done by virtue of Section 78 A
of the Indian Patents & Designs Act of 1911. Such forms are
No. 2, and No. 2A of the forms in the Second Schedule of the Act. 20
Reciprocal arrangements with the United Kingdom : —
By Section 78A(1) it is provided as follows :
“If His Majesty is pleased by Order in Council to apply such
of the provisions of section 91 of the Patents and Designs Act, 1907,
as relate to inventions or designs, to British India, then any person
who has applied for protection for any invention or design in the
United Kingdom or his legal representative or assignee, shall be
entitled to a patent for his invention or to registration of his design
under this Act, in priority to other applicants ; and the patent or
registration shall have the same date as the date of the application
in the United Kingdom :
Provided that :
(a) the application is made in the’ case of a patent within
twelve months, from the application for protection in
the United Kingdom."
And by Section 78A(3) it is provided : —
“The application for the grant of a patent or the registration
of a design under this section must be made in the same manner as
an ordinary application under this Act" : 21
Section 91 of the English Patents & Designs Acts 1907-1932
18 See also Section 21 of the Indian Patents & Designs Act and in parti-
cular the proviso to sub-section 4 thereof.
10 See page 333.
*• See Appendix No. 5 below.
91 For the further provisions of the Section see Appendix No. 5 below.
Ch. IX]
RECIPROCAL ARRANGEMENTS
353
to which reference is made in Section 78A (above) is the section of
the English Act which contains the corresponding reciprocal
arrangements enabling applications to be made in the United
Kingdom for United Kingdom Patents within one year of an applica-
tion for an Indian Patent having been made in British India. The
wording of Section 91, which may be set out here for convenience
of reference, is as follows : —
“91. — (1 ) If His Majesty is pleased to make any arrangement
with the government of any foreign state for mutual protection of
inventions, or designs, or trade marks, then any person who has
applied for protection for any invention, design, or trade mark in
that state or his legal representative or assignee shall be entitled to
a patent for his invention or to registration of his design or trade
mark under this Act or the Trade Marks Act 1905, in priority to
other applicants ; and the patent or registration shall have the same
date as the date of the application in the foreign state.
Provided that —
(«) The application is dated, in the case of a patent within
twelve months, and in the case of a design or trade
mark within six months, from the application for
protection in the foreign state ; and
(/>) Nothing in this section shall entitle the patentee or
proprietor of the design or trade mark to recover
damages for infringements happening prior to the actual
date on which his complete specification is accepted,
or his design or trade mark is registered, in this country.
(2) Where the same applicant has made two or more appli-
cations for protection of inventions in any foreign state to which
the provisions of this section apply, and the Comptroller is of
opinion that the whole of the inventions in respect of which the
applications were made are such as to constitute a single invention
and may properly be included in one patent, he may, if a separate
application dated within twelve months from the date of the earliest
of the foreign applications is made in respect of each of the foreign
applications, accept one complete specification in respect of the
whole of these inventions and grant a single patent thereon. The
patent shall bear the date of the earliest of the foreign applications,
but in considering the validity thereof and in determining other
45
334
THE LAW OF PATENTS IN INDIA
[Ch. IX
questions under this Act, the court or the Comptroller as the case
may be, shall have regard to the respective dates of the foreign
applications relating to the several matters claimed in the speci-
fication.
(3) The patent granted for the invention or the registration
of a design or trade mark shall not be invalidated —
(a) in the case of a patent, by reason only of the publication
of a description of, or use of the invention ; or
(A) in the case of a design, by reason only of the exhibition
or use of, or the publication of a description or re-
presentation of, the design ; or
( c ) in the case of a trade mark, by reason only of the use of
the trade mark,
in the United Kingdom or the Isle of Man during the period speci-
fied in this section as that within which the application may be made.
(4) The application for the grant of a patent, or the regis-
tration of a design, or the registration of a trade mark under this
section, must be made in the same manner as an ordinary applica-
tion under this Act or the' Trade Marks Act, 1905 : Provided that —
(a) In the case of patents the application shall be accom-
panied by a complete specification which, if it is not
accepted within eighteen months from the application
for protection in the foreign state or in the case of
applications made in accordance with the provisions of
sub-section (2) of this section from the earliest of the
applications for protection in the foreign state, shall
with the drawings, samples and specimens (if any) be
open to public inspection at the expiration of that
period ; and
(A) In the case of trade marks, any trade mark the regis-
tration of which has been duly applied for in the coun-
try of origin may be registered under the Trade Marks
Act, 1905.
(5) The provisions of this section shall apply only in the
case of those foreign states with respect to which His Majesty by
Order in Council declares them to be applicable, and so long only
in the case of each state as the Order in Council continues in force
with respect to that state.
Ch. IX]
WITH THE UNITED KINGDOM
355
(6) Where it is made to appear to His Majesty that the
legislature of any part of His Majesty’s dominions outside the
United Kingdom has made satisfactory provision for the protection
of inventions, designs, or trade marks, patented or registered in this
country, it shall be lawful for His Majesty, by Order in Council, to
apply the provisions of this section to that part of His Majesty’s
dominions, with such variations or additions, if any, as may be
stated in the Order.”
The condition mentioned at the beginning of Section 78A of
the Indian Act that the provisions of the section are to be effective
only if His Majesty, (that is to say in England), is pleased to extend
the benefit of the English Section 91 to Indian Patents, has been
fulfilled as was made known by an Order in Council made on 26th
November 1920.* 2 For convenience of reference the wording of such
Notification may here be set out : it is as follows : —
“Notification No. A. -33, dated the 26th "November 1920. Tho
following Order of His Majesty in Council applying to British India
the provisions of section 91 of the United Kingdom Patents and
Designs Acts, 1907 and 1919, so far as relates to Patents and
Designs, is republished for general information.
At the Court at Buckingham Palace, the 13th day of October
1920.
Present :
The King’s Most Excellent Majesty in Council.
Whereas by section 91 of the Patents and Designs Acts, 1907
and 1919 (7 Edw. 7, c. 29 and 9 and 10 Geo. 5, c. 80), it is in regard
to International and Colonial Arrangments relating to the registra-
tion of Patents and Designs, provided, inter alia , as follows : —
(5) Where it is made to appear to His Majesty that the
Legislature of any British Possession has made satis-
factory provision for the protection of Inventions,
Designs or Trade Marks, patented or registered in this
country, it shall be lawful for His Majesty by Order in
Council, to apply the provision of this section to that
Possession, with such variations or additions, if any, as
may be stated in the Order.
a 51 Notification No. A-33 dated 26th November, 1920, published in the
Gazette of India 1920, Part I at page 2241.
356
THE LAW OF PATENTS IN INDIA
[Ch..lX
And whereas it is made to appear to His Majesty that the
Legislature of British India has made satisfactory provision for the
protection of Inventions and Designs patented or registered in the
United Kingdom.
Now, therefore, His Majesty, by and with the advice of His
Privy Council, by virtue and in pursuance of the provision of the
above-recited sub-section, and of every other power Him thereunto
enabling, doth order, and it is hereby ordered, that the provisions
of section 19 of the Patents and Designs Acts, 1907 and 1919, so far
as relates to Patents and Designs shall apply to British India.
This Order shall take effect from the 2nd September 1920.
Sd. Almeric Fitzroy.”
The result is that the provisions contained in Section 78(A)
(allowing applications for Indian Patents to be made within 12
months of English applications for patents in the United Kingdom),
as set out above, are in full operation in British India.
As to reciprocal arrangements with other parts of His Majesty’s
dominions and with certain Indian States.
By Section 78A(4) it is further provided as follows : —
“Where it is made to appear to the Governor-General in
Council that the legislature of any other part of His
Majesty’s dominions (or of any State in India) has made
satisfactory provision for the protection of inventions
or designs, patented or registered in British India, the
Governor-General in Council may, by notification in
the Gazette of India, direct that the provisions of this
section, with such variations or additions, if any, as
may be set out in such notification, shall apply for the
protection of inventions or designs patented or regis-
tered in that part of His Majesty’s dominions (or that
State, as the case may be)”.
The Governor-General in Council has in fact been satisfied
that such satisfactory reciprocal provision in favour of British
Indian Patents has been made in several instances by the Govern-
ments of other dominions and states ; and the Governor-General in
Council has accordingly on various occasions made certain Notifica-
tions in the Gazette of India for that specific purpose ; and has
Ch. IX]
WITH OTHER PARTS OF H. M. DOMINIONS
357
thereby given the requisite directions so that the provisions of
Section 78A are made applicable in such cases ; thus enabling an
application for a Patent in British India to be made within one year
after an application in the respective other dominion or state, and
enabling inventors to have the benefit of these reciprocal arrange-
ments contained in Section 78 A of the Indian Act where an appli-
cation for patent has previously been made in the particular other
dominion or state referred to.
For convenience of reference the several Notifications of this
nature which have been so published and made effective arc the
following : —
NOTIFICATION No. A-342, dated the 27th February 1922.
“Whereas it appears to the Governor-General in Council that
the Government of the Island of Ceylon has made satisfactory provi-
sion for the protection of inventions patented in British India.
Now, therefore, in pursuance of the provisions of sub-sec-
tion (4) of section 78-A of the Indian Patents and Designs Act,
1911 (II of 1911) the Governor-General in Council is pleased to
direct that the provisions of the said section shall apply for the
protection of inventions patented in the Island of Ceylon”. 23
NOTIFICATION No. A-342, dated Simla, the 13th April 1922.
“Whereas it appears to the Governor-General in Council that
the Legislature of New Zealand is making satisfactory provision for
the protection of inventions or designs patented or registered in
British India.
Now, therefore, in pursuance of the provisions of sub-section
(4) of section 78-A of the Indian Patents and Designs Act, 1911
(II of 1911) the Governor-General in Council is pleased to direct
that the provisions of the said section shall with effect from the
15th July 1922, apply for the protection of inventions or designs
patented or registered in the dominion of New Zealand”. 24
NOTIFICATION No. A-342, dated Simla, the 2nd May 1922.
“Whereas it appears to the Governor-General in Council that
the Legislature of the Union of South Africa has made satisfactory
a * Published in the Gazette of India 1922, Part I, p. 223.
94 Published in the Gazette of India 1922, Part I, p. 480.
358 THE LAW OF PATENTS IN INDIA [Ch. IX
provision for the protection of inventions or designs patented or
registered in British India.
Now, therefore in pursuance of the provisions of sub-section
(4) of section 78-A of the Indian Patents and Designs Act, 1911
(II of 1911) the Governor-General in Council is pleased to direct
that the provisions of the said section shall apply for the protection
of the inventions or designs patented or registered in the Union of
South Africa.” 25
NOTIFICATION No. A-342, dated Simla, the 16th October
1923.
“Whereas it appears to the Governor-General in Council that
the Legislature of the Commonwealth of Australia is making satis-
factory provision for the protection of inventions patented, and of
designs registered, in British India.
Now, therefore, in pursuance of the provisions of sub-section
(4) of section 78-A of the Indian Patents and Designs Act, 1911
(II of 1911) the Governor-General in Council is pleased to direct
that the provisions of the said section shall, with effect from the
1st January 1924, apply for the protection of inventions patented,
and of designs registered, in the Commonwealth of Australia”. 2 6
NOTIFICATION No. A-342, dated Delhi, the 22nd November
1923.
“Whereas it appears to the Governor-General in Council that
the Legislature of the Dominion of Canada has made satisfactory
provision for the protection of inventions patented, and of designs
registered in British India.
Now, therefore, in pursuance of the provisions of sub-section
(4) of section 78-A of the Indian Patents and Designs Act, 1911
(II of 1911), the Governor-General in Council is pleased to direct
that the provisions of the said section shall, with effect from the
1st February 1924, apply for the protection of inventions patented,
and of designs registered, in the Dominion of Canada”. 27
NOTIFICATION No. A-342, dated Simla, the 4th August 1928.
“Whereas it appears to the Governor-General in Council that
aa Published in the Gazette of India 1922, Part I, p. 561.
30 Published in the Gazette of India 1923, Part I, p. 1361.
37 Published in the Gazette of India 1923, Part I, page 1656.
Ch. IX] WITH INDIAN STATES 359
the Legislature of the Irish Free State has made satisfactory pro-
vision for the protection of inventions or designs patented or
registered in British India.
Now, therefore, in pursuance of the provisions of sub-section
(4) of section 78-A of the Indian Patents & Designs Act, 1911 (II of
1911) the Governor-General in Council is pleased to direct that the
provisions of the said section shall apply for the protection of
inventions or designs patented or registered in the Irish Free
State'’. 28
DEPARTMENT OF INDUSTRIES AND LABOUR NOTI-
FICATION No. A-293, dated the 20th November 1935.
“Whereas it has been made to appear to the Governor-General
in Council that the Legislature of the Baroda State has made satis-
factory provision for the protection of inventions patented, and of
designs registered, in British India, the Governor-General in Council,
in pursuance of the provisions of sub-section (4) of Section 78-A of
the Indian Patents & Designs Act, 1911 (II of 1911) is pleased to
direct that the provisions of the said section shall, with effect from
the 7th December 1935, apply for the protection of inventions
patented, and of designs registered, in the Baroda State.”
Summary.
The countries therefore in regard to which, if an application
for Patent has there been made, an application for an Indian Patent
may on that account under the reciprocal arrangements be made
here at any date up to twelve months later (without fear of antici-
pation by publication in India of the Invention or previous foreign
application), arc the following : —
Under Sec. 78A (1)
THE UNITED KINGDOM.
Uuder Sec. 78A (4)
AUSTRALIA.
BARODA STATE
CANADA.
CEYLON.
IRISH FREE STATE.
NEW ZEALAND.
UNION OF SOUTH AFRICA.
9 * Published in the Gazette of India, Part II, dated the 25th August 1928,
page 1160.
360
THE LAW OF PATENTS IN INDIA
[Ch. IX
And by the same reciprocal arrangements when an application
for an Indian Patent has been made in India, the applicant has a
similar full twelve months in which he can thereafter (without fear
of any anticipation by publication of the Indian Patent Specification
in the foreign country) make an application for a foreign Patent
in any one of the same countries mentioned in the previous list.
Qualification of an applicant for Patent under the reciprocal
arrangements.
For applications for an Indian Patent made under such reci-
procal arrangements, all that is necessary to be declared by the
Applicant about himself is to the effect that he is the person who
made the foreign application or that he is the legal representative
of such person : or that he is the assignee of such person. 20
The International Convention for the Protection of Industrial
Property.
This international convention was originally made on 20th
March 1883, and has since been revised at Brussels on 14th Decem-
ber 1900, and at Washington on 2nd June 1911 and at The Hague
on 6th November 1925.
Almost every civilised country of the world, with but few
exceptions, has subscribed to it and has thereby become a contract-
ing party. As a result of this convention reciprocal arrangements in
connection with Patents and carrying reciprocal benefits which are
broadly speaking of the same nature as those created under the
special reciprocal arrangements already mentioned in the last
preceding paragraph of this chapter, are available and in effective
operation between every country which is a contracting party to
this International Convention.
It is by virtue of this International Convention and the reci-
procal arrangements thereunder that an American Patentee avails
himself of the right, if he chooses, within a year after his American
application, to obtain in the United Kingdom a British Patent
which will then have priority from the date of his American Patent ;
and vice versa. And so with German Patents in respect of priority
for the United Kingdom and with British Patents in respect of
*• See Form No. 2 (See Appendix No. 5). Also Form No. 2A in the case
of an application by a legal representative or assign of the foreign applicant.
Oh. IX]
THE INTERNATIONAL CONVENTION
361
priority for Germany : and so with the patents of every country
which is a party to the Convention. 30
British India has not subscribed to this International Conven-
tion and is not a party thereto. Having no system for the registra-
tion of Trade Marks, British India is not qualified to become a
party to the International Convention. Unless and until an Act
allowing and regulating the registration of Trade Marks in British
India is passed, there can therefore be no possibility of any reci-
procal benefit for inventors or merchants in regard to the priority
of Patents in British India and the other countries named under the
International Convention.
Though the Convention is not applicable to British India, yet
practitioners in India may desire to refer to this International
Convention in connection with English or American or German or
other Patents which may have been obtained in any of these
countries with a priority date from some other country under this
International Convention. For the full text of a translation of this
International Convention and most useful comments on procedure
to be adopted thereunder reference may conveniently be made to
Haddan’s Compendium of Patents and Designs at p. 415. 31
■° It may be of interest here to note a list, alphabetically arranged, of the
countries which have subscribed to the International Convention : —
Australian Commonwealth
Austria
Belgium
Brazil
Bulgaria
Canada
Ceylon
Cuba
Czecho-Slovakia
Danzig Free State
Denmark
Dominican Republic
Dutch Indies
Esthonia
Finland
France
Germany
Great Britain
Greece
Hungary
Irish Free State
Italy
Japan
Jugo-Slavia
Latvia
Luxemburg
Mexico
Morocco (French Zone)
Morocco (Spanish Zone)
Netherlands
New Zealand
Norway
Poland
Portugal with Azores
and Madcria
Roumania
Spain
Surinam and Curacoa
Sweden
Switzerland
Syria and Lebanon
Trinidad and Tobago
Tunis
Turkey
United States of America
* 1 Or see the pamphlet entitled “International Convention for the protection
of Industrial Property and International Agreement regarding False Indication
46
362
THE LAW OF PATENTS IN INDIA
[Cta. IX
For present purposes Clause 4 thereof, which is the operative
Clause of the reciprocal arrangements now under discussion, is
sufficient here to be stated ; which is : —
11 Art. 4.
A. (1) Any person who has duly deposited an application for
a Patent, or for the registration of a utility model, industrial design
or model or trade mark in one of the countries of the Union , err
his legal representative or assignee, shall enjoy, for the purposes
of deposit in the other countries , a right of priority during the
periods hereinafter stated.
(2) Every application which, under the domestic law of any
country of the Union, or under international treaties concluded be-
tween several countries of the Union, is equivalent to a regular
national application, shall be recognised as giving rise to a right of
priority.
B. Consequently, a subsequent deposit in any of the other
countries of the Union before the expiration of these periods shall
not Ac invalidated through any acts accomplished in the interval,
either, for instance, by another deposit, by publication or exploi-
tation of the invention, by the putting on sale of copies of the design
or model , or by use of the mark, and these acts cannot give rise to any
rights of third parties or of personal possession. Rights acquired by
third parties before the date of the first application which serves
as a basis for the right of priority are reserved in accordance
with the domestic legislation of each country of the Union.
C. (1) The above-mentioned periods of priority shall be twelve
months for patents and utility models, and six months for industrial
designs or models and trade marks.
(2) These periods start from the date of deposit of the first
application ; the day of deposit is not included in the period.
(3) If the last day of the period is a dies non or a day when
the Office is not open to receive the deposit of applications in the
of Origin” issued by the Board of Trade in the United Kingdom ( 1934 edn : price
4d net). As a matter of interest and convenience of reference by those to whom
the text of this International Convention is not in India readily available
an English translation of the French text of the convention in full is set out in
Appendix No. 6.
Ch. IX ]
INDIA NOT A SUBSCRIBER
363
country where protection is claimed , , the period shall be extended
until the first following working day .
D. (I) Any person desiring to take advantage of the priority of
a previous deposit shall be bound to make a declaration giving
particidars as to the date of such application and the country in
which it was made. Each country will determine for itself the latest
time at which such declaration must be made.
(2) These particulars shall be mentioned in the publications
issued by the competent authority , for instance , on the patents , and
the specifications relating thereto .
(3) The countries of the Union may require any person making
a declaration of priority to produce a copy of the application (with
the specification , drawings <&eJ previously deposited. The copy certified
as correct by the authority by ivhom the application was received , shall
not require any legal authentication , and may in any case be deposited
at any time within three months from the deposit of the subsequent
application without payment of any fee. They may require it to be
accompanied by a certificate from the proper authority , showing
the date of the application , and also by a translation .
(4) No other formalities may be required for the declaration of
priority at the time of depositing the application. Each of the
countries of the Union shall decide for itself what consequences
shall follow the omission of the formalities prescribed by the present
article , but such consequences shall in no case be more serious than
the loss of the right of priority .
(5) Subsequently , further proof in support of the declaration
may be required.
E. (1) Where an application for the registration of an indus-
trial design or model is deposited in a country in virtue of a
right of priority based on a previous deposit of an application for
registration of a utility model , the period of priority shall only
be that fixed for industrial designs or models .
(2) Further , it is permissible to deposit in a country an appli-
cation for the registration of a utility model by virtue of a right of
priority based on a patent application and vice versa.
F. No country of the Union may refuse an application for a
patent on the ground thal it contains multiple priority claims ,
364 THE LAW OF PATENTS IN INDIA [Ch. IX
provided that the application relates to one invention only within the
meaning of the law of that country.
G. If examination reveals that an application contains
more than one invention , the applicant may • divide the application
into the requisite number of divisional applications and preserve as
the date of each divisional application , the date of the initial appli-
cation , and if necessary, the benefit of the right of priority.
H. Priority may not be refused on the ground that certain
elements of the invention for which priority is claimed do not appear
in the claims formulated in the application in the country of origin ,
provided that the application documents as a whole disclose such
elements in a precise manner.
Art. 4 bis.
I. Patents applied for in the various countries of the Union by
persons entitled to the benefits of the Union shall he independent of
the Patents obtained for the same invention in the other countries,
tchether members of the Union or not.
2. This stipulation must be strictly interpreted, for example it
shall be understood to mean that patents applied for during the period
of priority are independent, in respect of the grounds for refusal
and for revocation as well as in respect of their normal duration.
3. The stipulation applies to all patents existing at the time
when it comes into effect.
4. Similarly, it shall apply, in the case of the accession of new
countries, to patents in existence, either on one side or the other, at the
time of accession.
5. Patents obtained with the benefit of priority shall enjoy in
the various countries of the Union a duration equal to that which they
would have enjoyed if they had been applied, for or issued without the
benefit or priority
British India not a party to the International Convention.
Since British India is not a party to this International Con-
vention it follows that there are no reciprocal arrangements effective
or in operation between British India and any other countries or
states, except only those which have been here previously mentioned
as specially created not under the International Convention but
Ch. IX] PROCEDURE IN ABSENCE OF OPPOSITION 365
under Section 78-A of the Indian Act of 1911 and under Section 91
of the English Acts of 1907-1932. 32
No reciprocal arrangements for example between India and
America.
It follows therefore, for example, that there is no period of
immunity from publication for American Patents in British India :
if an application be made in British India for a Patent for an
invention one day after the American Specification for the American
Patent has been published in India such application will be shut
out for the reason of prior publication. An account of the American
Patent contained in any scientific American or other journal pub-
lished in British India will have a similar effect by affording such
publication. 33 It may be noted that it is the practice in several
Scientific American Journals to give full and complete descriptions
of certain new American Patents as they arc granted. These journals
are occasionally freely circulated in Commercial and other libraries
in various parts of India. The evils of the present system are then
apparent. Also the difficulties confronting an American inventor
and Patentee who may desire to obtain a Patent for his invention
in British India : and vice versa.
Applications for Patents of Addition.
An advantage of a Patent of Addition is that, under Section
15A(2), no renewal fees are payable on it.
The proper form on which the application is to be made is
the appropriate one of the following forms in the Second Schedule
of the Indian Act : Forms No. 1C ; No. 1AC ; No. 1BC ; No. ICC ;
No. 2C ; or No. 2AC. 34
It is not necessary here to make any further comment in regard
to an application which may be made for a patent of addition. The
general principles regarding the declarations which an applicant
has to make are no different from those already discussed earlier
in this chapter.
#a Cf. page 359 ante.
•• For the question of prior publication further see p. 194.
See Appendix No. 5 below.
84
366
THE LAW OF PATENTS IN INDIA
[Ch. IX
Stages of procedure between application and grant in the absence
of opposition.
Reference has already briefly been made to the sequence of the
procedure between the making of the application for a Patent and
the receiving of the grant of the Patent. Where there is no opposi-
tion by third parties and there arc consequently no opposition pro-
ceedings under Section 9, the various stages were mentioned under
the following heads : — 35
(i) Application for grant.
(ii) Examination of the application by the Controller.
(iii) Notice of the decision of the Controller.
(iv) Advertisement of the acceptance of the application.
(v) Scaling and grant.
The only stage at which any objections to the application or
any objections to the validity of the Patent asked for has to be met
during this sequence of steps is at the second step during and in
connection with the examination of the application by the Controller.
It is accordingly proposed now briefly to consider the nature of the
objections which may be raised by the Patent Office at this stage ;
and by what means and to what extent the Applicant can meet such
objections if raised.
Objections may be raised by the Patent Office even though there
are no opposition proceedings by third parties.
Objections may arise in the examination by the Patent Office
even in the cases now under consideration where there arc no oppo-
sition proceedings under Section 9. This occurs as a result of the
examination and search which it is obligatory for the Patent Office
to make under Section 5 of the Indian Patents & Designs Act
of 1911.
Extent of investigation and search necessary to be made by the
Controller in British India.
The sole provisions under the Act regulating the investigation
and search to be made by the Controller arc contained in Section 5
and nowhere else. Prom a perusal of that section it will be seen
8fi See Chapter V at page 71 above.
Ch. IX |
INVESTIGATION BY THE PATENT OFFICE
367
that the investigation is limited to the following field : viz* cases
where : —
(a) the nature of the invention is not fairly described, or
(b) the application, specification and drawings have not
been prepared in the prescribed manner * * * or
(c) the title does not sufficiently indicate the subject-matter
of the invention, or
(d) the statement of claim does not sufficiently define the
invention, or
(e) the invention as described and claimed is prima facie
not a new manufacture or improvement, or
(f) the specification relates to more than one invention.
These six points which are to be investigated are not altogether
happily or logically worded in the section. Point (c) is clear and is
confined to the choice of the title of the invention. Point (b) may
be taken to cover an investigation to ensure that the relative
regulations and rules have been complied with, and is also thus far
clear. Point (a) appears to be ambiguous : as to whether it means
insufficiency in describing the ambit of the invention or insufficiency
is describing the manner in which the invention is to be carried out,
or both. However the combined effect of (a) and (d) may be taken
together to cover the field of insufficiency in both respects. Point (e)
on an ordinary reading of the words covers merely the general
ground of invalidity for prima facie want of subject matter that the
alleged invention is not a “manner of new manufacture” or an
“invention” under the Statute of Monopolies. Point (f), is self
explanatory.
The six points may thus be dealt with more conveniently as
five ; viz. : —
(i) As to the title of the invention.
(ii) As to the application and specification (including
drawings) not being prepared iu a prescribed manner.
(iii) As to insufficiency.
(iv) As to prima facie want of subject matter : no manner of
new manufacture : no invention.
368 THE LAW OF PATENTS IN INDIA [Ch. IX
(v) As to multiplicity of inventions.
Now it is to be observed that these five points do not corres-
pond with the field for investigation which is laid down under the
current English Patents & Designs Act, 1907-1932 ; nor are they
worded so as to correspond precisely with the previous English Act.
A comparison of Section 5 of the Indian Act of 1911 with the rela-
tive corresponding provisions which are to be found in Section 3,
Section 6, Section 7 and Section 8 of the current English Patents &
Designs Act of 1007-1932 will show that : —
As to points (a) plus (d) of the Indian Section (z’.e. insufficiency)
this is correspondingly made a part of the field of the investigation
required under the English Act : see Section 3(2) & Section 6(2). As
to point (b) of the Indian Section, this corresponds word for word
to similar provisions in Section 3(2) and Section 6(2) of the English
Act ; under which this point is also made a part of the field to be
similarly investigated by the Patent Office in England. As to point
(c) (i. e. title of the invention) this in the same way has a precisely
corresponding provision in the English Act : See section 3(2).
As to points (e) and (f) . of the Indian Section (i.e. prima facie
want of subject matter : not a “manner of manufacture’' or not an
“invention”) there are no corresponding provisions in the English
Act. On the other hand, and this is the most important result of this
comparison, it will be found that those features which in practice
usually amount to the most important part of the field of the inves-
tigation made by the Patent Office in England, which are those
directly provided for under the four English sections already men-
tioned (*. e. the investigation as to novelty or prior grant in certain
well defined and limited respects) are entirely absent from the pro-
visions of Section 5 of the Indian Act.
As the whole matter is important, it may be worth while to
note here, on an analysis of the four sections in question of the
English Statute (and taking into account also the general provisions
both of the English Stature and of the Statute of Monopolies), what
are the several points which the investigation of the Patent Office
in England is directed to cover at this stage. These are : —
(i) (As to the title) “the title does not sufficiently indicate the
subject matter of the invention” : under Section 3(2).
(ii) (As to not being prepared in the prescribed manuer.) “the
Ch. IX.]
INVESTIGATION BY THE PATENT OFFICE
369
application, specification, or drawings have not been prepared in the
prescribed manner” : under Section 3(2) and Section 6(2).
(iii) (As to insufficiency of description) : — “the nature of the
invention is not fairly described : or that the nature of the invention
or the manner in which it is to be performed is not therein particu-
larly described and ascertained” : under Section 3(2) and
Section 6(2).
(iv) (As to want of novelty by publication in a prior specifica-
tion) : — “the invention claimed has been wholly or in part claimed
or described in any specification published before the date
which the patent applied for would bear if granted and left pursuant
to any application for a patent made in the United Kingdom and
dated within fifty years next before such date” : under Section 7(1).
(v) (As to want of novelty by publication in documents (other
than specifications) if within the knowledge of the Patent Office) : —
“if within the knowledge of the Comptroller the invention
claimed has been made available to the public by publication
before the date which the patent applied for would bear if granted
in any document (other than a specification ” : under
Section 7(5).
(vi) Also (as to prior grant) : — that “the invention claimed
has been wholly or in part claimed in any specification published on
or after the date which the patent applied for would bear if granted
and deposited pursuant to an application made in the United
Kingdom for a patent which if granted would bear prior date to the
date which the patent applied for would bear if granted” : under
Section 8(1).
It may be added that by virtue of general principles it appears
to be established in the United Kingdom the Comptroller has power
to include in his investigation in spite of the absence of any specific
directions to this effect, a consideration also of the following
points : — 30
(vii) (As to subject matter) : — whether the purported inven-
tion is obviously not a manner of new manufacture or obviously not
in invention within the meaning of Statute of Monopolies and of the
English Patents & Designs Act. In this respect reference may now
' See Terrell (8th edn.) pages 37, 215. Also 41 R.P.O. 530, 45 lt.P.C. 411.
47
370 THE LAW OF PATENTS IN INDIA [Cb. IX
be made also since 1932 to the general provisions of Section 75 of
the English Act of 1907-1932.
(viii) (As the multiplicity) : — whether the specification in
question relates to more than one invention : in this respect
reference may be made also to Section 14(2) of the English Act.
(N. B. Additional Points to be investigated under the English
Act, which refer only to matters connected with the existence in
England of a provisional specification, since there are no provisional
specifications in India, have been excluded from the eight points
mentioned.)
Points (iv), (v) and (vi) of the above analysis are those- which
constitute the most important matters covered by the investigation
and search which is required to be made in the United Kingdom
under the English Act. These points (iv) & (v) & (vi) are not under
the Indian Patents & Designs Act expressed as being required to be
covered by any search or investigation on the part of the Indian
Patents Office.
As to the construction of Section 5 of the Indian Act.
A question which then arises is, as to the matters covered by
points (iv), (v) and (vi) last mentioned, being matters for which an
investigation by the Patent Office in the United Kingdom is
expressly directed and authorised under the English Act, whether
the Indian Act, is to be construed in any way so as to be taken to
include similar directions and authority to the Indian Patent Office
to make a similar investigation.
In order more clearly to appreciate the nature of the question
now under consideration, it will be advisable to recollect what nor-
mally occurs in practice under the English procedure under the
English Act. In England at this stage, as is well known, a most
thorough search is first made by the Examiners of the Patent Office
for the purpose of ascertaining what if any anticipations there may
be in the form of other specifications which have been published prior
to the date of the application in question. Such search goes back
over a period of 50 years. If any such anticipating specification s are
found, the applicant is notified by the Patent Office thereof. In
England also at this stage if the purported invention applied for is
known by the English Patent Office to have been covered by some
Ch. VX]
CONSTRUCTION OF SECTION 5
371
prior publication in some document independently of any prior
English Specification, this fact is similarly notified to the applicant
and his attention drawn to the document in question. In England
an investigation is also made by the Patent Office in regard to Speci-
fications which, though not published prior to the Applicant’s appli-
cation and though not therefore constituting any anticipation by
want of novelty, yet have been filed prior to the date of the investi-
gation ; and if any such Specification is found which coincides with
the invention of the Applicant and is of such a date (for reasons of
reciprocal priority or any other reason) that it will, if a Patent be
granted for it, constitute a grant prior to the grant to the Applicant,
the Patent Office will in the same way notify the Applicant
of the existence of such Specification. On receipt of such notice
from the Patent Office of the existence of the relative other Specifica-
tion or of the relative other document as the case may be, the Appli-
cant may then either amend his own Specification, if he can do so in
such a way as to avoid the evil effects of the other specifications ; or
he may amend it by inserting general disclaimers as to the stage of
the prior art and thus elucidating the ambit of his claimed invention
and its nature so as to show that he is not claiming what has
been claimed in the other specifications ; or if necessary he may
amend it by inserting by way of disclaimer a specific reference by
number and date to the other specification.
Any objections on the points (iv), (v) or (vi) now being consi-
dered may be described principally as objections for want of novelty
( i . e. for want of novelty for prior publication in a prior Patent
Specification or for want of novelty for prior publication in some
other document (not a Patent specification) which is within the
knowledge of the Comptroller) ; or as objections for prior grant. In
so far they are to be regarded as objections of that type, it is
clear that they are not directly included in any of the terms of
Section 5 of the Indian Act : which contains no reference in terms
to any investigation for want of novelty or to any investigation
regarding prior publication whether in the form of Patent Specifica-
tions or otherwise. Are they then indirectly included in any of the
terms of Section 5 ? As to this the only clause which can on any
possible construction be read as covering directions on the Patent
Office to take an investigation affecting questions of want of novelty
or prior grant would appear to be sub-clause (e). But on the whole
372
THE LAW OF PATENTS IN INDIA
[Ch. IX
it would not seem that the words “ prima facie not a new manufac-
ture or improvement” can, without undue strain of language, be
taken to be meant to cover an investigation for want of novelty in
connection with other specifications or other documents. For the
words “prima facie” in themselves would seem to limit the field of
enquiry to matters appearing on the Applicant’s specification itself.
Then it may be grged that any objections on the points (iv),
(v) & (vi), in addition to being objections for want of novelty or
prior grant, may also be viewed from another angle as objections
for insufficiency : on the following reasoning. That it may be
said that the invention of the Applicant will be all right if properly
delimited and described, but in so far as it omits to disclaim matter
contained in other specifications or other documents it suffers from
insufficiency. If this were to be so, then it might be said that an
investigation as to objections on the points (iv), (v) & (vi) might bo
directed and authorised by the wording of sub-clause (d) of Section
5. But here again it i 3 submitted that it would entail too great a
strain of language. For to read into the words “the statement of
claim does mot sufficiently define the invention,” a direction and
authority to the Indian Patent Office to carry out a search of other
specifications and documents in the manner suggested, it is necessary
to say that the Patent Office is first to search those other specifica-
tions or documents, secondly to come to a conclusion on questions
of novelty, construction or identity, and only then to come to a
decision on any question touching insufficiency : viz. a decision,
which after first finding on a question of novelty that the Applicant’s
specification is anticipated by some other Specification or document,
only then finds that the Applicant’s Specification is bad for insuffi-
ciency because it does not contain a proper reference to that other
Specification or document.
For the above reasons it is submitted that Section 5 does not
contain any directions or any authority to the Controller in British
India to make any investigation at all relating to the contents of
other specifications or other documents at this stage of the
proceedings.
Objections which may be raised by the Patent Office at this stage
apart from Section 5.
The next question then is whether an investigation on the
Ch. IX] NATURE OF OBJECTIONS THAT MAY BE RAISED 373
points (iv), (v) & (vi) is authorised and justified apart from
Section 5.
It appears to be established in the United Kingdom that in spite
of no specific directions or authority being contained in the corres-
ponding sections (7 & 8) of the English Act, yet the Comptroller
has an inherent power to reject an application at this stage if it is
obvious on the face of the Specifications that the application is mere-
ly frivolous, or that the purported invention is clearly not proper
subject matter for a Patent, as in a case where it is obviously not a
“manner of new manufacture’’! or obviously not an “invention” at
all. It would seem that in the United Kingdom the Comptroller
has similarly power to reject an application at this stage for obvious
illegality or immorality.
It appears that the Comptroller in the United Kingdom has
always had such inherent power even prior to the 1932 Act. Now
under that Act such power is fortified by Section 75 of the English
Act.
It is submitted that in British India, similarly, the Controller
will have an inherent power, apart altogether from any powers given
him under Section 5, to raise objections at this stage on similar
grounds. Vix. : — in cases where it is obvious on the face of the
Specification that the application is merely frivolous : or where it is
clear on the face of the Specification that there is no manner of new
manufacture : or that there is no invention at all : or for obvious
illegality : or for obvious immorality. But all such objections arise
on the face of the Applicant’s Specification alone. They do not
entail an investigation or search of any other documents.
There would seem to be therefore no inherent power existing
in the Controller by which he is authorised to make any search as to
want of novelty for anticipation of the Applicant’s invention in
other documents at this stage : either in other prior Patent Specifica-
tions or in other documents apart from Specifications. It is submit-
ted for the reasons stated that the true position in law is that there
are no such directions given to him or powers granted to him either
within or outside Section 5.
If this is the true position, then the Controller in British India
is nowhere given directions or authority to make an investigation
at this stage on the points (iv), (v) or (vi) abovementioned.
374
THE LAW OF PATENTS IN INDIA
[Ch. IX
Benefits to an Applicant of a thorough search being made at
this stage by the Patent Office : present position unsatis-
factory.
It is clear that if in every case of an application for a Patent
being received by the Patent Office, an applicant can rely on a
thorough search being made of all prior Indian Specifications by the
trained staff of the Patent Office Examiners without additional
expense to the applicant, this will be of considerable advantage to
the applicant. By this mcan9 he will be saved the expense and
difficulty of having to make a search of the records himself or
through an agent. He will also be saved in many instances the
subsequent danger of attacks being made at a later date on his
Patent for anticipation in prior Patents entailing, it may be, infinite
trouble, expense and loss to him thereafter. In short by being given
an opportunity at this early stage of putting his Specification in
proper order to meet such objections as arc benevolently raised by
the Patent Office before any attack is made on the Patent by other
persons he will be enormously benefited.
So long as the search is thus benevolently made for his benefit
by the Patent Office and the Patent Office does not refuse to accept
his Patent or refuse to accept it except on terms entailing amend-
ment which may be objectionable to him, no doubt any search which
may be made is nothing but beneficial to the Applicant. And a9 the
applicant is the only person directly affected at that stage, whatever
search the Patent Office takes upon itself to make is not likely to be
questioned (unless by the tax-payers), since it is solely for the benefit
of the Applicant.
When the Patent Office as a result of such search goes further
and refuses to accept the Applicant’s Patent or refuses to accept it
except on terms to which he objects, the position becomes different.
It i9 possible then that the power or authority of the Patent Office to
make such search and so to act, might be put in question ; since it
would appear that the Controller is only given power to refuse to
accept an application if he comes to a decision adverse to the
applicant on the points expressly stated in Section 5, and none
other.
In any event the present position is unsatisfactory : both from
the point of view of the Applicant and from that of the Indian Patent
Ch. IX]
PRACTICE OF THE PATENT OFFICE
375
Office. The position will continue to be unsatisfactory until the
Act is amended so as to make clear the extent and nature of the
investigation which the Patent Office is empowered to make at this
stage, if it so desires : as well as the extent and nature of such search
as it is to be bound to make, on which the Applicant may in all
cases rely.
Actual practice of the Patent Office in British India.
In spite of what has been said above as to the very material
points iu which the Indian Act differs from the English Act,
and in spite of the construction which it has been submitted should
properly be put on the Indian Act, (that is to say that there is no
direction or authority to make a search as to want of novelty), the
fact remains that the Patent Office in India docs in actual practice
habitually, at the stage when an application for Patent is received,
make an investigation for want of novelty. The field of such investi-
gation ordinarily extends to cover a search of the contents of Indian
Specifications published prior to the date of the Applicant’s applica-
tion ; such Indian Patents being habitually cited by the Indian
Patent Office at this stage when considered to be anticipations. Asa
result of the investigation made at this stage the Indian Patent Office
on occasions, also, cites prior Specifications of the United Kingdom
when considered to amount to anticipation. On occasions it also
cites even scientific text-books and catalogues and matters of general
knowledge. So that the field of investigation in practice appears in
some cases to cover the contents of other documents as well as
Indian Specifications.
It does not appear to be the practice however of the Indian
Patent Office usually to make any investigation as to the possibility
of there having been any prior grant : that is to say any search in the
contents of Indian Specifications such as have not bean published
until after the date of the Applicant’s application but such as will
bear a date of grant prior to the date of his Patent if granted.
Notice to the Applicant.
Section 5 in the words empowering the Controller to “refuse
to accept the application or require that the application, specifica-
tion or drawings be amended before he proceeds with the applica-
tion” entails the obligation on the Controller, if he raises any of the
376 THE LAW OF PATENTS IN INDIA [Ch. IX
objections covered by the sub-sections 5 (1) (a) to (f), to notify the
applicant of these objections. The effeet in this respect is the same
as the effect of the corresponding sections (3, 6, 7 & 8) of the
English Act and of the current Patent Office procedure in the
United Kingdom.
The extent of the grounds on which objections can be made at
this stage by the Patent Office before acceptance of the
application.
Little remains necessary to be here stated in respect of the
nature in detail of the grounds of objections which may be raised
by the Patent Office in such notifications : since these grounds have
already been discussed when discussing the field of the search
required to be made. The objection as to the title (Sec. 5 (1) (c)),
and as to the application, specification and drawings not having been
prepared in the prescribed manner (Sec. 5 (1) (b) ), and as to the
specification relating to more than one invention (Sec. 5 (1) (fj) need
no further comment : as to the objection as to the alleged invention
not being a manner of new manufacture (Sec. 5 (I) (e)), this objection
has already been fully discussed in Chapter VI to which reference
may be made for further details for the purpose of ascertaining in
what cases the Controller will be and whon he will not be justified
in taking such an objection : similarly as to the objection as to
insufficiency of description (Sec. 5 (1) (a) and Sec. 5 (1) (d)) reference
may be made to an earlier discussion of this matter in Chapter VII.
It must be noted that in addition to the grounds of objection
open to the Patent Office at this stage which have already been
mentioned as arising in connection with Section 5, the Comptroller
is also empowered to refuse the grant of a patent at this stage under
Section 69 on the ground that the U9e thereof “would, in his opinion,
be contrary to law or morality”. As to what grounds might justify
such refusal, reference may be made to Chapter VI, where these
topics have also been already discussed. 37
It is submitted also as already indicated that the Controller
also has an inherent power to raise objections at this stage on the
ground that the application is merely frivolous; (possibly on the same
ground that there is no manner of new manufacture in the alleged
a7 See pages 119 and 165 (above).
Ch. IX]
INSERTION OF REFERENCES
377
connection) ; or that there is no invention at all : but that he can
only raise objections on these grounds last mentioned where the
position is obvious on the face of the Applicant’s Specifications above.
As to the ground that there is no mention at all, in the sense of no
inventive step, reference may as to this also be made to Chapter VI
where this topic has already been fully discussed.
It is submitted that an objection as to want of utility, or an
objection that the applicant was not the true and first inventor, or
an objection of fraud or an objection on the ground of obtaining
cannot ordinarily be raised by the Indian Patent Office at this stage.
Whether or not the Indian Patent Office is properly entitled to raise
objections for want of novelty at this stago has already been dis-
cussed earlier in this Chapter. It is submitted that in any event
the Indian Patent Office is not entitled at this stage to go into any
question of want of novelty on any ground of prior user.
As to cases when an amendment is called for by the Controller for
the insertion of references.
In practice objections at this stage are usually made by the
Controller on the ground of anticipations which he considers exist
in other specifications ; and it is in this respect that questions most
frequently arise as to how far the applicant is bound to insert refere-
nces cither in a general form or by specific reference by number to
such other specifications.
The various steps in the English procedure regarding this
matter of the insertion of references are treated of in Rules Nos. 28
to 37 of the English Patents Rules 1932. There are no correspond-
ing rules applicable in India either relating to the search and investi-
gation to be made by the Patent Office or relating to this matter of
the insertion of references as a result of such search : but sec only
Rule No. 14 of the Indian 1933 Rules.
Various means of remedying the objections by amendment.
The objections raised at this stage by the Patent Office may
be met by amendment by the insertion in the Applicant’s specifica-
tion of a specific reference by number to some other particular
Specification ; or by amendment by the insertion of some general dis-
claimer in the Applicant’s specification in the form of a descriptive
reference in the portion dealing with a description of the prior art
48
378
THE LAW OF PATENTS IN INDIA
[Ch. IX
which will cover the effect of the invention comprised by the other
specification or by amendment of the Applicant’s specification by
cancellation of certain parts of it or of certain of its claims, or both ;
or by amendment by rearranging or by re-writing certain parts of
it ; or by amendment by additions or improvements of the explana-
tions or directions contained in it ; or by any combination of these
means.
It may be a matter of considerable practical importance to the
Applicant as already indicated when a reference to a prior Patent
. is called for, which of the various forms of reference has to be
adopted.
It will be observed that on the view previously arrived at the
majority of objections raised at this stage by the Indian Patent
Office in the form of citations of prior Indian Patent specifications
arc made as a result of a search for want of novelty which is nowhere
under the Act directed to be made or authorised (as a ground for
the refusal to accept an application). This remark, on this view,
would apply to the greater part of the work of the Examiners in
fact employed at the Patent Office for the purpose of carrying out
such searches. But since the attitude adopted by the Indian Patent
Office is in point of fact (with the one exception that it does not
make the English search as to prior grant) to make an investigation
over a somewhat similar fiel(l as that made by the Patent Office in
the United Kingdom, it becomes of interest for practical purposes
to consider such principles as have been laid down in the United
Kingdom ; viz. : — in regard to the making by the Patent Office in
the United Kingdom of citations in respect of anticipating speci-
fications or other documents, and the principles enunciated in the
English cases regarding the proper method for meeting such cita-
tions by the insertion of general or specific references in the Appli-
cant’s Patent or otherwise.
Observations as to the practice relating to references in the United
Kingdom.
In the United Kingdom for practical purposes there are three
distinct forms of references which may be adopted by the applicant
in his Specification.
(i) A statutory Reference : — This will be in the form stated
in Rule 31 or Rule 35 worded as follows : —
Ch. IX]
DISTINCT FORMS OF REFERENCES
379
“Reference has been directed, in pursuance of (Section 7,
sub-section (4) or Section 8, sub-section (2) as the case may be) of
the Patents & Designs Acts 1907-1932, to Specification No. (such
& such of such & such date).”
This Statutory Reference as provided in the English Rules is
to be inserted in the Specification after the Claims.
(ii) A Specific Reference : — The usual wording of such re-
ference is : —
“I am aware of Specification No. (such <fe such) and make no
claim to anything described (or claimed) therein, but that ”
This is usually inserted after the clause known as the “Flaving
Now” clause and preceding the Claiming clauses.
(iii) A disclaimer in the form of a general reference : — This
will be without any mention of the number of the other Specification
referred to. A common form is such as that worded as follows : —
“It has been proposed hitherto to (then the effect of the other
invention is here described)”.
This is usually inserted in the early part of the Specification
which describes the state of the prior art : for the purpose of
showing that the whole of such prior art is disclaimed.
It is of interest to note certain effects of the use of these
different forms of reference. The one most popularly favoured by
Patentees or prospective Patentees is the disclaimer by general
reference. For as the Specification will then not carry on the face
of it any specific reference to any other Specification the tendency
is for the Specification to be considered to have a higher commercial
value, which is unimpaired. It is clear of course that what is
disclaimed, by description, as in the description of the prior art,
forms no part of the monopoly which is protected. But there is
a notion, particularly strong among the commercial world, that in
such a case at least the Specification does no more than mean what
it says ; and that it can have no sinister or unknown danger orbe
given any unexpected construction outside that to be placed on the
words borne on its face.
The next favoured among the commercial world is the specific
reference with its disclaimer : the least favoured commonly being
considered to be the statutory reference. For it is considered, or
380
THE LAW OF PATENTS IN INDIA
[Ch. IX
was so considered at least until recently, that a reference in the
Statutory Form carried with it some taint that was derogatory. In
fact among foreign patentees, especially, it seems that an idea was
largely current that the mere existence in one Specification of a
Statutory reference to a second Specification meant that the owner
of the first patent would of necessity be under an obligation to
pay royalties or something of the sort to the owner of the second.
For such reasons applicants have frequently expressed a preference
wherever possible to the second rather than the first of the three
forms of reference abovementioned.
In actual results such popular view, certainly in regard to
the first and second forms, is incorrect. It is to be noted that in
the form of Specific Reference, there is an actual disclaimer of all
that is claimed in the other Specification ; and that such disclaimer
is effective as a disclaimer whether it turns out that the other
patent is in truth valid or invalid. Its effect is that something is
to a certain extent in any event subtracted from the field of the
monopoly claimed. It is to be noted on the other hand that in the
form of Statutory Reference there is no actual disclaimer as such.
The clause has been inserted because in the Comptroller’s opinion
it is necessary that the applicant should disclaim to some extent
(or in part) the other specification. The clause may be treated
accordingly as being inserted merely to show the Comptroller’s
opinion of the position. In the final result, if it can be shown that
the Comptroller was incorrect and that the other specification in
no way affects the applicant’s specification, then the statutory
reference may actually be treated as ineffective. For if there is
nothing which need be disclaimed, the Statutory Reference is so
worded that it disclaims nothing. In that event the Patentee
keeps the whole monopoly mentioned as it stands without any
subtraction. On the other hand if it is decided that the Comp-
troller was correct in his view, then when the applicant’s speci-
fication comes to be construed, the Statutory Reference in it will
be treated as an effective disclaimer disclaiming all of the other
specification which requires to be disclaimed. There can be no
danger therefore of the Specification being held bad for want of
novelty or insufficiency in relation to the other Specification.
Among patent agents therefore and other discerning people the
Statutory Reference has recently acquired more favour than pre-
Ch. IX]
EFFECT OF A REFERENCE
881
viously. It is in most cases found preferable to a Specific Reference
and in some cases may even be preferred to a disclaimer by way
of a general reference by description.
It may bo noted that by adopting a general disclaimer in
general words for the purpose of disclaiming what has been mono-
polised or described only in some other particular Specification,
there is a danger that in the result actually more may be disclaimed
than what has been disclosed in the prior Specification. Sometimes
a mere condensed extract in general terms or a quotation of a small
part only of such prior Specification, given without any specific
reference to that Specification and taken out of its context may
in the result have the effect of disclaiming too much.
There is an alternative form of the Specific Reference, occa-
sionally used, worded as that which was directed to be used in the
case of Society des Usines Clmniques Rhone- Poulenc™ thus : —
“A process has been described in and claimed by Specification
No. (such & such) for uniting (etc.) (here the effect of the other
invention is described) ” This was directed to be used in a case
where the other specification to which the reference was to relate
had not been published at the date when the Applicant’s specifica-
tion had been filed ; and therefore the Applicants objected to using
the words “I am aware of” in connection with the other specification.
It was also suggested by the Court that this variant form of
Specific Reference had an advantage in that it resulted in less am-
biguity in its description of what was disclaimed.
As to this suggested advantage, it is submitted that while it
may well be considered to be of some advantage that the description
of what is disclaimed is to be contained in the Specification itself
without the necessity for a reference to a second document {i. e.
the other specification) yet this slight benefit is probably in most
cases outweighed by the disadvantage of the ambiguity and source
of danger which may arise at a later stage from an incorrect para-
phrase of the effect of the other specification in the A pplicant’s
specification.
On the other hand this variant form of specific reference may
be found to have an advantage which docs not appear to have been
(1933) 50. R. P. C. 230.
THE LAW OF PATENTS IN INDIA
[Cb. IX
considered in the judgment in that case ; in that it uses no dis-
claiming words and may if construed, possibly, be held to have
advantages similar to those already referred to in connection with
a Statutory Reference : unless on the contrary view, it is held
that by mentioning and describing the other invention this must
be taken like an ordinary disclaimer to be a reference to the prior
art so as to amount in any event to a desclaimer thereof.
The comments noted above are made somewhat tentatively
and arc not intended to be dogmatic : they will serve to indicate
certain of the questions of practical importance which arise in
connection with this matter of the insertion of references. This
matter has recently assumed a greater degree of practical import-
ance than formerly. It is to be hopefully anticipated therefore
that any remaining doubts as to the effect of the various forms of
reference in use or as to the form of those which should be used
will speedily be cleared up in forthcoming decisions.
It is to be noted that it is now the English practice, as
directed by Section 7 (5) of the English Acts 1907-1932 by virtue
of the 1932 amendment, for the Examiner’s report to include, besides
United Kingdom Specifications, also any document which is within
the knowledge of the Comptroller (or Examiner) as mentioned in
that sub-section which contains a claim or a description wholly or
in part of the Applicant’s invention. It is to be noted that the
Act does not make it obligatory on the Patent Office to make a
search for these documents as for United Kingdom Si>ccifications,
but only provides for mention thereof to be included in the
Examiner’s report if within his knowledge. In practice however
it appears that an investigation which is by no means perfunctory
is usually made. Specifications of Indian Patents and of American
and other foreign patents which have been published in the United
Kingdom will fall under these provisions.
It appears to be the practice in the United Kingdom in cases
.where another specification is discovered by the Patent Office which
is considered to be one in which the Applicant’s invention is wholly
claimed, to stop making any further search ; and to notify the
applicant in the form of a Provisional Report. For if the difficulty
which appears on the face of it to be insuperable cannot be got
over, it will be mere waste of time for the Patent Office to continue
Ch. IX]
CASES
383
and complete the search. If however the Applicant by amendment
can get over the difficulty raised at that stage, then the search will
be proceeded with. This is provided for under Rule 28 of the
English Rules which reads as follows : —
“28. When the Examiner in prosecution of the investiga-
tion prescribed by sub-section (1) of section 7 of the
Acts finds that the invention claimed in the specification
under examination has been wholly claimed or des-
cribed in one or more specifications referred to in the
sub-section, he shall, without any further prosecution of
the investigation, make a provisional report to that
effect.
If the provisional report of the Examiner made under this
Rule be not reversed or altered, it may be deemed a final
report, and the application shall be dealt with as provi-
ded by sub-section (4) of the said section. If however,
such provisional report be reversed or altered, the
investigation shall be continued, and a further report
shall be made, and the specification shall be dealt with
as provided in sub-section (3) or sub-section (4) of the
said section, as the case may require.”
For present purposes it is not necessary here further to discuss
the English Rules : these will be found in full in Appendix No. 3
below.
It appears to be the practice in the United Kingdom not to
order a Statutory Reference to a specification of a prior patent
which has been revoked. 8 **
Decided cases in connection with the English practice.
It may be of use here to note the result of the decisions in
certain recent cases decided under the English Patent Law. As has
been stated a search and procedure is in practice adopted by the
Patent Office in British India which is similar in many rcBpects to
that conducted in the United Kiugdom under Sections 7 and 8 of
the English Act. The principles of these cases may it is submitted
therefore be considered as applicable under Indian Patent Law
*• See British Gelanese etc. : Application (1932) 49. II.P.U. 263.
884
THE LAW OF PATENTS IN INDIA
[Ch. IX
except in so far as they refer to a “Statutory Reference” which is a
thing non-existent under Indian Patent Law.
(i) A recent decision is that in George Baker's Application* 0 .
The question arose in relation to certain opposition proceedings.
In that case the Patent Office had decided to allow the grant of the
Patent subject to an amendment of the applicant's specification
which would make the acknowledgment of the other invention more
precise, but without requiring a specific reference by number to the
opponent's specification. The opponents appealed. Luxmoorc J. in
deciding the appeal held that that was a case where a reference stat-
ing the number of the opponent's specification was necessary. The
case however turns on its own facts and does not, it is submitted lay
down any generally useful principles as to when a reference should
be by number and when it should not.
(ii) See : Ruth Aldo Co . {Inc.) : Application , 41 In that case
the Comptroller had ordered a statutory reference to another speci-
fication to be inserted in the applicant's specification. This was
so ordered before the application was accepted by the Patent
Office : and the particular statutory reference was duly inserted
by amendment in the applicant's specification ; and the applica-
tion was then accepted. Opposition proceedings followed. In
these the opponent, being the owner of the Patent to which the
statutory reference related, claimed that the statutory reference
was insufficient and in effect that the Patent was invalid unless it
contained a specific reference to his specification with an express
disclaimer thereof. The Controller refused to order any such speci-
fic reference and allowed the grant of the Patent with the Specifica-
tion containing the statutory reference to the opponent's specifica-
tion. Both parties appealed : the opponent on the ground that the
grant should be refused unless the specification contained a specific
reference (with an express disclaimer) ; the applicant for patent on
the ground that the Comptroller was wrong in demanding any
reference at all. It was held that the applicant's appeal succeeded ;
and the statutory reference wa9 struck out. The question being
raised whether it was possible to delete a statutory reference, it was
held that it was possible.
(1984) 51. K.P.C. 144.
41 (1933) 50. K.P.C. 253.
Ch. IX]
AS TO SPECIFIC REFERENCES
385
(iii) See : British Celanese Ltd.’s Application 42 . In that case
the Comptroller had ordered a statutory reference. On appeal it
was decided by Luxmoore J. that in that case no statutory reference
was called for. The conditions requiring a specific reference were
also referred to in regard to the conditions laid down in Hopkin’s
Patent 43 which were mentioned with approval. The following
passage from the judgment of Luxmoore J. for convenience of refer-
ence may here be noted : —
“I gather that the learned Comptroller has directed the inser-
tion of the reference to the Opponents' Specification by number
because in his opinion notice of this Specification should be given
to the public. I am unable to follow his reasoning in this respect.
The learned Comptroller has himself decided (and I agree with him
that the case does not fall within any of the grounds which would
justify him in making an order for a specific reference ; yet he iu
fact directs a reference by number. So far as 1 understand the
position, n reference by number to a particular specification is a
specific reference to that specification no matter in what part of the
specification that reference appears. To meet any possible criticism
as to the proper description of the prior art, Sir Arthur Colefax on
behalf of the applicants offered to amend his Specification in the
following respects (These were then stated). He also suggested, as
part of this proffered amendment, that all reference to Peytral's
process should be struck out. In my judgment, the proposed further
amendments in conjunction with the description of Peytral's process
as amended by the Comptroller-General make the reference to the
state of the prior art accurate and free from all ambiguity, and this
being the case I can see no adequate reason for any mention of the
Opponents' Specification by number. The conclusion to which I
have come is that the Applicants are right in objecting to the inser-
tion of any reference by number to the Opponents' Specification in
their own Specification".
(iv) See : SocUt& des Usines Chimiques Rhone- Poulenc. 44 In
that case the Comptroller had ordered a specific reference to another
specification to be inserted in the Applicant’s Specification. The
4a (1933) 50. R.P.C. 247.
4i (1910) 27. R. P. C. page 72.
(1933) 50. R.P.C. 230.
49
44
386
THE LAW OF PATENTS IN INDIA
[Ch. IX
case was one where the other specification was not published at the
time the Applicant’s specification was filed but would obtain a prior
date by virtue of the reciprocal arrangements under Section 91 of
the English Act. On appeal Luxmoore J. upheld the decision of the
Comptroller, is so far as it directed a reference by number but dis-
missed and varied the form in which such specific reference in such
a case was to be worded. The following extract of the judgment is
of interest : —
“The chief object of a specific reference is not to advertise a
particular patent, but to give the public notice that there is danger
of infringement of an earlier patent if the invention covered by the
later patent is put into practice. Considering and comparing the
two material Specifications, I am satisfied that the invention des-
cribed in and claimed by Specification No. 328,919 is involved in
that described and claimed hy Specification No. 340,445 I agree
with the Comptroller-General that it is essential in the interests of
the public that there should be a specific reference to the earlier
Specification in the later Specification.
The question next to be considered is the form such specific
reference should take. The Comptroller-General has decided that it
should be effected by amending the Applicant’s Specification by the
insertion at line 79 on page 2 after the word “that” the words “we
are aware of specification No. 328,919 and make no claim to any-
thing claimed therein but that”. Mr. Shelley objects to these words
on the ground, first, that the Specification No. 328,919 was not
published at the date of the application for No. 340,445 and it is
therefore untrue to state that the Applicants are aware of the
earlier Specification, and, secondly, that the words directed to be
inserted import ambiguity into the later Specification. I am of
opinion his objection is justified on both heads. If a specific
reference is inserted in a specification followed by a disclaimer, the
disclaimer should state as clearly as possible the precise matter
disclaimed, and it is, 1 think, wrong to put the disclaimer in general
terms, leaving it to the reader to make up his mind after reading the
two material specifications what it is intended to disclaim.
In my judgment the reference in this case should be in the
following words M A process has been described in and claimed by
Specification No. 328,919 for uniting two or more sheets of glass
Ch. IX]
IN DERIVATIVE PATENTS
387
with one or more interposed layers of strengthening material con-
sisting of bringing together the surfaces to be united to effect
preliminary cohesion and compressing the united sheets in a closed
vessel by means of a fluid introduced under pressure while the con-
tacting surfaces are softened, the assembled sheets being directly
exposed to such fluid.” I think that these words should be inserted
as a new paragraph on page 1 of Specification No. 340,445. The
order of the Comptroller-General will be varied accordingly by
directing this insertion and by omitting the amendment directed to
be made on page 2 at line 79”.
The question of what constituted a master patent was also
discussed with reference to the judgment in Ilopkin’s Patent
(1910) 27. R.P.C. at page 72.
(v) See Application for a Patent by Daniel Adamson & Co.
Ltd , 45 Tn that case the Assistant Comptroller had refused to order
any amendment of the applicant's specification by a reference to the
opponent's specification ; and this decision was upheld on appeal
by Luxmoore J. The question was whether the opponent's speci-
fication constituted a master patent on which the applicant's patent
was a derivative and it was held not to be a master patent. The
following extracts from the decision of the Assistant Comptroller
in discussing the point in issue may bo of interest : —
“It is claimed by Mr. Moritz that Specification No. 270,250
has the attributes of a pioneer or master patent, and that the heat
exchangers claimed by the Applicant fall within the claims made
in the said prior Specification.
The expression “master patent” is incapable of any precise
definition. In the well known case of Hopkins’ Patent 46 it was
said by the late Comptroller-General, Mr. Temple Franks, that
there should be some wide and governing principle not hitherto
claimed or described, to bring an invention within the meaning of
the term master patent. But the term is, I think, a relative one,
and where a series of inventions may be regarded as derivatives
of an earlier invention which discloses for the first time an idea
which is common to them all, the said earlier invention may have
4a (1933) 50.R.P.C. 171.
40 (1910) 27. R.P.C. 72.
388
THE LAW OF PATENTS IN INDIA
[Ch. IX
the character of a master patent in relation to the series in ques-
tion, even though it itself may be one of a series occupying a
similarly derivative position in relation to some still earlier and
wider patent. Smaller branches of a tree have the same sort of
relation to a main branch that the main branches bear to the parent
stem. The first patent for a triple heat ‘exchanger in which flue
gases heat both feed-water and air must have been in the fullest
sense of the words a master patent, but that fact does not exclude
the possibility of a later master patent for some particular kind
of triple heat-exchangcr having distinctive characteristics and
capable of assuming various inventive forms or varieties. I should
therefore define a master patent, if it must be defined, as being a
patent for an invention involving some novel idea or conception
which is capable of assuming various forms, each of which nece-
ssitates some definite but secondary inventive step.” (Then
followed a comparison of the two inventions). “I do not think
that I ought to resolve a doubt of this kind in the Opponent’s
favour if the result is to be an amendment of the Applicant’s
Specification of a kind which would be publicly regarded
as indicating that the Applicant’s Patent is a derivative or
tributary patent. The effect of a specific disclaiming reference
to an opponent’s Specification, introduced in proceedings of the
present kind, is well-known, and it may detract gravely from
the commercial value of the Applicant’s Patent. I have come to
the conclusion that the conditions laid down in the case of Hopkins’
Patent (loc. cit) as necessary conditions for the insertion of a
specific reference arc not fulfilled in the present case and I refuse to
order the insertion of such a reference.”
It will be useful also here to note the following extract from
the judgment of Luxmoor J. : —
"Before dealing with the particular features of the present
case, it will I think be convenient to state what the law is with
regard to the insertion into Letters Patent of what is termed a
“reference.” A reference may be either general or specific. A
general reference is inserted for the purpose of preventing the
later patentee from alleging his invention is wider than that which
he is entitled to claim, both in his own interests in order that his
specification may not be invalidated by excessivo width of claim
Ch. IX] PRINCIPLES FOR THE INSERTION OF REFERENCES 389
and in the interests of the public, on the ground that the public arc
entitled to know what the patentee is entitled to claim and to have
a fair description of the existing state of knowledge (sec Guest &
Barrow's Patent , 1888) 5 R.P.C. page 812 at page 315.
A specific reference is inserted in order to warn the public
and to call attention to a relationship existing between the invention
described and claimed in the specification in which such reference
appears and the invention described and claimed in the Letters
Patent the subject of such specific reference. Lord Buckmaster
when Solicitor-General laid it down in the case of Walcfer and
Peek's Application , (1913) 32. R.P.C. page 199, that a specific refer-
ence is not intended for the protection of an opponent who desires
to have his patent referred to in the applicant’s specification, but
is introduced in order that the specification may be clear and definite
and that a member of the public who desires to use the invention
for which the applicant is seeking Letters Patent may not be misled
into thinking that an invention is involved or included in the
specification which is in fact the subject of protection of prior
Letters Patent of which no warning has been given. Lord Buck-
master said at page 202 : “The idea that any patent which protects
what is called a principle is therefore a patent to which reference'’
(and here I think it is plain he is speaking of specific reference)
“must be made in the Specification of any subsequent patent that
affects similar matters is one to which I cannot accede.
My view of the matter is and has always been that a specific
reference should only be inserted when its absence would lead to
confusion or to misunderstanding of the real nature of the invention,
and to the risk that a person reading the specification might think
that the discovery it described included or involved the discovery
already protected by an undisclosed patent.’' I respectfully agree
with this statement of law. In my judgment it accords with the
decision in Hopkins' Patent (1910) 27. R.P.C. page 72, with which I
also respectfully agree. I should point out that there is a wide
difference between the case where the existence of an earlier patent
may imperil or prevent the user of the invention described in the
later specification and the case where the existence of the earlier
patent might be and is a ground for opposing the grant of a patent
in respect of the invention described in the later specification. As
390
THE LAW OF FATENTS IN INDIA
[Ch. IX
Mr. Justice Sargant pointed out in Re Ucar’s Patent (1922) 39.
R. P. C. page 269 at page 276, “the question of warning the public
that the patent before them is a patent which may not be available
to be used at all except with the consent of some other person is not
the same as the question of warning them that there is a possibility
that the patent in question may not be a patent which confers mono-
poly rights. It is a very different thing. Everyone dealing with the
subject-matter of patents must know that the question of the mono-
poly rights of a patentee are always somewhat doubtful and anyone
attempting to take an assignment of the monopoly rights is in a
different position from a person who is merely attempting to use the
invention, and it is more necessary that a person should be warned
that it is not safe to use the invention than that a person should be
warned that the monopoly rights arc liable to some particular defect.
I do not think therefore that specific reference ought generally to be
indulged in so much in the case merely of there being danger to the
monopoly as there being danger with regard to the safe user of the
patent.” Let me apply these tests to the present case. (A compa-
rison is then made between the two inventions described in the two
specifications). “In my judgment in view of the express pre-
ference in the Applicant's Specification to the difference between the
apparatus claimed and other heat exchanger apparatus with tubes
enclosed in concentric tubes, I think this is not a case where any
specific reference to the Opponent's Specification ought, having
regard to the principles I have stated, to be allowed. I think
that the Assistant-Comptroller's decision was correct and ought
to be affirmed.”
This decision is both important and clear : as an authority for
the principle that specific references (i. e . by number) should only be
required in cases where the owner of the patent applied for would be
unable to use the invention to which it relates without the consent
of some other person who is the owner of another patent.
(vi) See : N, V. Philips’ Oloeilampenfabriken : Applications , 47
This case is of interest in the clear light that it throws on the
procedure adopted in the United Kingdom under the English Patents
& Designs Acts 1907-1932 at the stage after the Application is made
and before it is either accepted or refused or directed to be amended
4 r
(1933) 50. R. P. 0. 167.
Ch. IX] WHERE MASTER PATENT INVOLVED 391
by the Patent Office. In this case the application for Patent had
been submitted, but the Examiner in connection with his investiga-
tion under Section 8, of the English Acts had taken objection to the
Application on the ground that the invention claimed had been in
part claimed by another specification, and that specific Reference with
a disclaimer was required to be inserted in the Applicant’s specifica-
tion. The other specification in this case was one which had not
been published until after the date which the Patent applied for
would bear if granted : it was however deposited pursuant to an
application which if granted would ( i . c. by reason of the reciprocal
arrangements) bear a date earlier than the date of the Patent applied
for. The Patent Office were willing to accept the application if the
reference and disclaimer were worded as follows : — “I am aware of
Specification No. (so & so) and do not claim anything claimed
therein.” The Agents for the Applicant were willing to insert a
reference and disclaimer only in the words which would acknow-
ledge the other Specification by number but only disclaim “any-
thing protected therein.” The reason for their contention is fully
explained in the report of the case. The decision on the point was
given by the Comptroller who upheld the view of the Examiner ;
and held that the form of disclaimer offered by the Agents could not
be accepted as sufficient to avoid the citation made by the Examiner
under Section 8 ; and that in the circumstances it was for the Appli-
cants to put the Specification into a form which w r ould delimit the
invention to which they considered themselves entitled and then for
the Patent Office to consider whether the citations under Section 8
had been avoided, or whether the insertion of Statutory References
to the other Specification under Rule 35 was called for.
(vii) See : E. I da Pont de Nemours <6 Co : Application , 48
This was a case heard in 1931 reported in the 1933 volume
as it had then recently been decided to report the case. In
this case the Examiner had reported in pursuance of Section 8(1) of
the English Acts and had in such report cited another specification.
The Applicants offered certain amendments of their claims in their
specification which, they contended, avoided all necessity for any
reference to the other specification. The acting Comptroller held that
the insertion of the claims according to the proposed amendment was
(1933) 50. R. P. C. 115.
392
THE LAW OF PATENTS IN INDIA
[Ch. IX
not sufficient amendment by way of disclaimer and refused to allow
such amendment. The Solicitor Genernl (Sir R. Stafford Criffs) up-
held the decision of the Comptroller and accordingly dismissed
the appeal and ordered the insertion of the reference (by number) io
question.
(viii) See : Hopkin’s Patent 49 : Application for Revocation
under Section 26. The decision of the Comptroller- General in that
leading case is so important that it will be useful and convenient
if it is here set out in full : —
“With regard to the whole question of specific references includ-
ing in the term all references by name and number, whether inserted
in the more formal way before the Claims or in the less formal des-
cription of the invention at the beginning of the Specification — I
have carefully considered the various decisions and reported cases
upon the subject. As a result of such consideration I do not find
it easy to formulate any very clear or definite principle from the
various decisions referred to, and in my opinion much of the reason-
ing and many of the principles enunciated have become less relevant
or less applicable at the present time for the following reasons.
Before the powers of search and the extensive powers of amend-
ment in regard to the description and Claims were conferred on the
Comptroller, it was not the practice to call on a patentee to alter his
description or his Claims to any ^considerable extent. The Specifica-
tion was left, as far as possible, in its original form, and, as a conse-
quence, a specific reference often became a necessity both in the
interests of the public and of a prior patentee. There was no other
way of attaining the desired object of distinguishing, as far as
possible, between new and old. But where a Specification is properly
and scientifically drawn there would appear to be, as a general rule,
little or no need for specific references or disclaimers. The ideal
Specification would claim, and claim only, in clear and succinct
language the patentee's invention, and distinguish it in the descrip-
tion from what had gone before, or show its relation to previous
inventions. Matter which was irrelevant would be excluded, and
only such matter inserted as would be reasonably necessary for
showing the best form of, or the best method of carrying out, the
invention sought to be protected. In a Specification so framed
4 #
(1910) 27. R. P. C. 72.
Ch. IX]
MEANING OF “MASTER PATENT”
there could be no ambiguity, and no need, as a rule, for further pro-
tection of the public or prior patentees. Under existing circum-
stances it ought, I think, to be the aim of the Office to secure, as far
as possible, that Specifications shall be so framed, and thus obviate
the necessity for inserting reference? and disclaimers, which, in
many instances are only inserted as a rough and unscientific method
of defining the real scope of the invention, and its relation to former
invention and discovery.
After careful consideration of the whole subject, I think it will
be for the general convenience, if I attempt to formulate the princi-
ples which, in my view, ought to regulate the practice of this Office
in the future, in directing specific references or disclaimers by name
and number, and which as at present advised, I desire to apply in all
cases which come before me. Such principles can of course be
only very generally suggested, and must, be open to exception in
special cases, but I think some definite practice may tend to prevent
disputes and disagreements in the future. It is generally conceded
that the real object of such references is not to advertise a prior
patentee, but to guide the public, to define the true scope of an in-
vention, and to bring into clear light the relationship and importance
of the Patent to another. What is requisite is to ascertain the true
value of the invention involved : and I think the real underlying
principles, which should govern the insertion of specific references,
is this — “Is the governing idea, or basic principle of an invention
sought to be protected, claimed or protected by a specific earlier
Patent ?” In other words the condition necessary is, that the new
invention should be based on a definite invention already protected,
and the earlier invention should be clearly and unequivocally
repeated or involved in the new Specification.
Applying this general principle to more specific instances, it
would seem that there are two classes of cases to be considered
(1) where what is called a “master Patent” is involved (2) where
there is no claim to a “master Patent” as such. Assuming that the
Specification is clear and unambiguous and otherwise free from
objection, I think the principle which calls for a specific reference in
either of these cases is substantially the same, although the method
of applying it may differ in the two cases.
(1) To take first the case of a “master Patent”. I think that
50
394
THE LAW OF PATENTS IN INDIA
[Ch. IX
in all discussions in regard to specific references this term should be
strictly construed, and confined to cases where there has been the
discovery of a new and important pioneer principle — so to speak —
which has been embodied in practical form or shape and claimed in
general terms. There should be some wide and governing principle
not hitherto claimed or described to bring the invention within the
meaning of the term “master Patent.” Used in this sense a specific
reference is rightly inserted if the new invention is merely an im-
provement or amendment on the “master Patent”, and for this
reason. The “master Patent”, ex concessis, stands alone ; it has
broad claims, which in view of the importance of the principle
involved are allowed a wide construction. It may be said to com-
prehend and foreshadow any construction embodying the principle
or providing any similar means for carrying it into effect. Thus
any later Patent which amends or improves may be rightly looked
upon as merely defining or shaping an invention already specifically
or generally claimed in the “master Patent”. The governing principle
of the later Patent is found in the former, and the reference is
rightly inserted in accordance with the principle stated above,
because the earlier invention is, in effect, taken and appropriated as
the basis of the latter.
It is not indeed every case, where a “master Patent” is con-
cerned that will call for such references, but only when a wide and
generous construction of the “master Patent” claimed appears to
involve or foreshadow the later invention. The mere connection
of an invention with a “master Patent” will not necessarily be suffi-
cient. The later invention must be formed directly or by implica-
tion on the former Patent. Further, there may possibly be cases
where time and notoriety have made the “master Patent” so well
known that a specific reference may become superfluous and unneces-
sary. Where a “master Patent” in this sense is claimed, the proper
notices should be given under the Rule, so that an adequate search
may be made both by the Office and the applicant. The Office search
at the examination stage must not be relied on as conclusive on this
point.
(2) In the cases where there is no proper “master Patent”
involved, I think the same general principle in regard to specific
references, applies ; but the conditions are stricter and more severe.
Ch. IX] PRACTICE IN INDIA AS TO SPECIFIC REFERENCES 395
I think that in such oases a specific reference should only be allowed
where the following conditions are present vix. : — (a) The patent
to which reference is asked should be clear and distinct in its own
field and, as far as can be gathered, free from anticipation, (b) The
invention claimed therein must be clearly and unequivocally claimed
or included in the later Specification, (c) It must be claimed or
included substantially as a whole and not merely in part, (d) The
improvement or addition claimed by the applicant must be small
and the governing principle, so to speak, must come from the prior
Patent.
The danger to be guarded against in these cases is, the undue
preference which may be given by the naming of one Patent which
is not alone in the field, and I think the practice should, therefore,
bo confined generally within the limits indicated above. In such
cases a specific reference is necessary, because the prior invention
is distinct, and is re-claimed in toio in the later Patent ; it is the
principal or governing factor, and there is little or no advance in
inventive power. In many such cases such a reference would be an
alternative to the refusal of the Patent or of a specific claim. In
these cases I think, that, generally speaking, the Office search will
be sufficient to raise a prima facie case under (a) as to absence of
anticipation &c.
In my opinion specific references ought in general to be con-
fined to the two classes of case indicated above ; and that in all
other cases general disclaimers only should be inserted in the later
Specification, embodying, if need be, the substance of any prior
Patent which appears involved, but without name or number. In
this connection I think it is clearly important in the interests of the
public that what is the subject of a recent and existing Patent should
not be stated as if it was matter of common knowledge, and I think
protection should be given to prior patentees when this is the case
by suitable amendment or disclaimer. I do not indeed think that -
it is any part of the Comptroller’s duty to consider the ques-
tion of infringement ; or that the public can ask this Office to
protect it by special reference or otherwise where infringement
is likely or possible. This has been clearly laid down in many
reported cases. I think, however, the public have a right to be
warned, as far as possible, of what is special, and what is matter
396
THE LAW OF PATENTS IN INDIA
[Ch. IX
of common knowledge. In certain cases also it may amount to a
disparagement of the invention of a prior patentee to state it in
terms of common knowledge, and the practice is thus rightly open to
objection.
(3) So far I have dealt with Specifications which are clear and
unambiguous or can be made so by proper amendment ; there remains
the class of cases where the Specification is ambiguous and it is
difficult or impossible to introduce amendments or disclaimers or to
rewrite it so as to disclose the true scope of the invention and
distinguish it from what has gone before. In these cases it may
still be necessary to protect the public, and to do justice to prior
patentees by the rough and ready means of inserting specific refer-
ences in certain special cases. It should, however, I think, be borne
in mind that this is not the best or most scientific method, and that
it iB merely employed to save time and trouble in cases where other
amendment seems impracticable.
It should further be added that in the early examination stages
specific references must of course, still be inserted, where necessary,
to penalise a patentee who cannot or will not meet the objections of
the Office. Finally, in all that has been said above on the question
of specific references it has been assumed that there is some patent-
able invention involved in the proposed Patent, and that it has
escaped rejection on the groundvof complete anticipation.”
The observations in that decision have been continuously and
entirely upheld in later cases : save only for the minor point that it
has been observed by Luxmoorc J. that there is really no necessity
to make any practical distinction between the case where the other
Specification to which a reference is to be made is a “Master Patent”
and the case where it is not.
Further observations as to the practice in British India :
The Controller cannot, of course, order any “Statutory Refer-
ence” in British India ; for there is no provision in any Act or Rule
providing for such a thing, and he is not empowered to do so. He
does however in practice give directions for Specific References by
number to be inserted by amendment in the Applicant's Specifica-
tion in cases where he considers this to be necessary. This he can
do in a precisely similar manner to that customarily adopted by the
Ch. IX] STAGE WHEN OBJECTIONS MAY BE RAISED • 397
Comptroller in the United Kingdom ; by refusing to accept the
application without such an amendment as may be suggested by him.
He can and does also in other cases give directions on similar terms
for the insertion of ordinary disclaimers in the form of a general
reference by description precisely as is done in practice in the
United Kingdom.
After an objection has been raised by the Patent Office to the
acceptance of an application, if the Applicant cannot satisfy the
Controller by any form of amendment that the objection has been
removed, then the Controller in British India, having no power to
order a Statutory Reference, has no intermediate choice of action ;
but he must either accept the application with such faults as it has
or refuse to accept it altogether.
It is the practice of the Indian Patent Office not to give
disclosure to any person of the result of any search which has been
made by it. The application, which may be made by any person in
the United Kingdom for such disclosure under the English Rule
37 50 is directly provided for by the proviso to the English Section 68.
The English Section 68 and its proviso reads as follows : —
“68. Reports of examiners made under this Act shall not
in any case be published or be open to public inspection,
and shall not be liable to production or inspection in
any legal proceeding, unless the court or officer having
power to order discovery in such legal proceeding certi-
fies that such production or inspection is desirable in
the interests of justice, and ought to be allowed :
Provided that, on application being made by any person in
the prescribed form, the Comptroller may disclose the
result of a search made under section seven or eight of
this Act on any particular application for the grant
of a patent where either —
(a) the complete specification has been accepted ; or
(b) the complete specification has been published and the
application has become void.”
Provision is expressly made under the English Act, by Section
68 and Rule 37, enabling any person, whether he was a party to the
original application or not, to obtain disclosure from the Patent
•' See Appendix No. 3 below.
398 THE LAW OF PATENTS IN INDIA [Ch. IX
Office of the result of a search made under Sections 7 and 8 of the
English Act® 1 .
There is no corresponding proviso in the Indian Section 60 :
which reads merely as follows : —
"Reports of or to the Controller made under this Act shall
not in any case be published or be open to public
inspection.”
Time for the raising of objections by the Patent Office.
Ordinarily all objections emanating from the Patent Office
will be notified to the Applicant for Patent at the stage before the
acceptance or the refusal, as the case may be, of his application. It
has however been held in England that it is allowable to the Patent
Office to reopen the matter if necessary later and that “there is
jurisdiction in the Comptroller to take notice of any reason for not
granting a patent at any time before the grant is made” : even
though “such reason might properly have been taken and considered
at some oarlier stage in the proceedings.” The reason for this
decision is, in the words used by Luxmoore J. that “the duty of the
Comptroller subject to the provisions of the Consolidated Acts
(i.e. the English Patents and Designs Acts 1907-1932) is twofold,
to protect the public and to see that the Crown grant is not impro-
perly given.” In the case in question an objection in connection
with Section 38 A of the English Act arose during opposition pro-
ceedings : it was held that it was not open to the opposer to take
the objection but that it was open to the Comptroller to do so. 52
Right of appeal.
The effect of Section 5(2) of the Indian Act is that the
applicant will have a right of appeal from a decision of the Con-
troller both in a case where the Controller refuses to accept an appli-
cation for any one of the objections indicated in this chapter and in
a case where for any one of such objections he refuses to accept the
application except on an amendment from the Applicant. Such
appeal is however to the Governor-General in Council only.
81 See T’a application (1925) 42. R. P. C. 505.
** *>. see H. A. Met* Laboratories Inc-. Application (1933) 50 R. P. C. 355
at p. 358.
CHAPTER X
STAGES OF PROCEDURE BETWEEN APPLICATION AND
GRANT WHEN OPPOSED— OBJECTIONS AFTER
ACCEPTANCE OF THE APPLICATION BUT
PRIOR TO THE GRANT— OPPOSITION
PROCEEDINGS BEFORE THE
CONTROLLER.
As to who may oppose.
By Section 9(1) of the Indian Act of 1911 it is provided as
follows : —
“Any person may on payment of the prescribed fee, at any
time within four months from the date of the advertisement of the
acceptance of an application, give notice at the Patent Office of
opposition to the grant of the Patent on any of the following
grounds, namely (then the grounds are stated) : but on no other
ground”.
The words “any person” are the same as the words used in the
corresponding Section 11 of the English Act: these words in practice
have acquired a restricted meaning. 1
1 The following observations may be of interest as to the history of
this matter in England : that is to say as to the question whether any particular
degree of interest was required to be shown by an opponent in proceedings in
opposition to grant, or whether any member of the public with no special interest
was entitled to oppose the graut. Before 1852 a procedure totally different to the
present procedure was in force. Under that procedure opposition to a grant of
patent was only open to such persons as had, previously to the filing of the
application for the Patent to be opposed, filed documents known as caveats. (See
Edmunds at p. 650.) Such documents were in the nature of caveats relating to
certain general classes of product or manufacture and might be in force for one
year. They did not refer specifically to opposition to any one Patent. It is
not necessary for the present purpose therefore to go back earlier than 1852.
In 1852 was passed the Act known as the Patent Law Amendment Act of
1852 (15 & 16 Viet, c 83). It was this statute which discontinued the caveat
procedure. This statute, while making available the right of opposition to
persons who had not had such right before, imposed a certain limitation on the
400
THE LAW OF PATENTS IN INDIA
[Ch. X
Who may oppose.
In addition to Section 9 abovementioned of the Act itself the
Rule affecting this matter and made under the Act is Rule 21(1) of
the Indian Patent and Designs Rules, 1933 which is as follows : —
"Within 14 days of giving notice of opposition, the opponent shall
leave at the Office a full written statement in duplicate, setting out
fully the nature of the opponent’s interests, the facts upon which
he bases his case and the relief which he seeks.”
class of persons who could oppose a grant of patent, such as may be compared
to the limitations still held to be in force under the present English law, by
stipulating that only Buch persons could oppose who had an interest in the
matter. Thus in Section 12 of the Statute of 1852 the wording relating to oppo-
sitions was as follows “and any persons having an interest in opposing the
grant of letters patent for the said invention shall be at liberty to leave parti-
culars in writing of their objections to the said application at such place and
within such time and subject to such regulations as the Commissioners shall
direct’’.
The Act of 1832 held the field till it was repealed in 1883 by the Act of
1883.
The Act of 1883 which was in 1888 consolidated and known as the Consoli-
dated Acts of 1883-1888 was differently worded from the Act of 1852. Curiously
enough no specific reference was made in the Act of 1883 to any interest (such
as had been specifically mentioned in the Act of 1852) as being required to be
possessed by an opponent in proceedings of opposition to grant at the first stage
of such proceedings before the Controller : a qualifying limitation was however
made in regard to such proceedings at the stage of appeal before the Law Officer.
By Section 11(3) of the Act of 1883 the words used in referring to the
opponent before the Law Officer were “any person being in the
opinion of the Law Officer entitled to be heard in opposition to the grant”.
It may be remarked that even in this passage of the section no specific
reference is made to the degree of interest required to be shown by the opponent ;
nor is the word “interest” which was previously used in the Act of 1852 used at
all in Section 11 of the Act of 1883. In regard to the proceedings in the first
instance before the Controller the wording of the Act of 1883 (by reason of its
omission of all reference to any interest required), appears to have been at first
understood to mean that any member of the public could constitute himself an
opponent and be heard in opposition to the grant before the Controller.
This appears from a passage in an 1890 edition of Edmunds on Patents for
Inventions in which, in the body of the text of the book, the following statements
of the law as it was then supposed by him to exist is to be found at page 175
“Any person may oppose the grant of a patent before the Controller but on
appeal to the Law Officer only such persons as in his opinion are entitled to be
heard will be granted a hearing”. In regard to the proceedings on appeal before
Ch. X]
OPPOSITION TO THE GRANT
401
From the fact that the rule expressly stipulates that the
opponent shall in his full written statement set out fully the nature
of his interests, it must be understood that the Indian practice is
intended to follow the English practice in allowing not the public
in general to oppose a grant but only those persons who have a
the Law Officer it was very soon that the words of Section 11 of the Act of 1883
were interpreted in decisions to mean that before the Law Officer in any event
only an opponent would be heard who showed that he had a substantial
personal interest in opposing the grant.
The next stage in the decisions construing the Section was that it came to
be decided that the view, of which the statement of the Law by Edmunds as
above is an example, was incorrect. It came to be decided that the proceedings
before the Law Officer were only in the nature of an appeal proper from the
proceedings before the Comptroller ; and that the same degree of interest was
required to be shown by an opponent before he could be heard in opposition before
the Comptroller also in the first instance as before the Law Officer at the later
stage on Appeal. The following English cases may be referred to on this point
In re Glossop (1881) Griffin P. C. 285 (Herschall S. G.) Re Heath d- Frost (1836)
Griffin P. C. 288 (Clarke S. G.) Re ffookham (1886) Griffin A. P. C. 32
(Webster A-G.) Re Lancaster (1884) Griffin P. C. 293 (Gorst S-G.) Re Hill (1888)
5. P. O. R. 599. Re Macevoy (1888) 5. P. O. 11. 285. Re Bari stow (1888) 5.
P. O. R. 286. Re VOiseau and Pierrard (1887) Griffin A. P. C. 36. (See Edmunds
1890 Edn. p. 175). BrownhUVs Patent (1889) 6. P. O. R. 136.
If the Act of 1883 had not been preceded by the Act of 1852 containing
as it did so exclusive a limitation of the class of persons who would be allowed
to oppose a grant to the class of interested persons only, or, if the Act of 1883
had not been preceded in England before 1852 also by the system, older still,
under which none could oppose a grant except the few persons who had previ-
ously lodged Caveats, it may well be doubtful whether the wording of the Act of
1883 taken alone would have been construed as it was. On the wording of the
Act of 1883 taken by itself there would seem little to prevent any member of the
public from opposing a grant of Patent. It is due no doubt to tho history of
Patent administration in England which preceded the Act of 1883, that in the
result the words “any person” or “any person entitled to be heard’' used in the
Act of 1883 have come to carry the limited meaning of "any interested person”.
In any event the Courts had long before the subsequent recent legislation
in England clearly defined the law to be, that a certain degree of personal -interest
was required to be shown by an opponent in proceedings in opposition to the
grant of a patent before he could be heard either before the Comptroller in the
first instance or on appeal before the Law Officer.
The Act of 1907 both in its original form and in its form as amended by
the Act of 1932 has precisely followed the exact wording on. the point now
under consideration which was used in the Act of 1883 : the only difference being
51
402 THE LAW OF PATENTS IN INDIA [Ch. X
certain quantum of interest in the Patent under consideration. This
Indian Rule of 1933 follows in its wording precisely the corres-
ponding English Rule which is Rule No. 43 of the Rules framed
under the English 1932 Act. 2
Since the new rule is both explicit in itself and follows the
wording of the English rule now in force, and, since, as has been
already mentioned, the English practice is settled in requiring that
that by the Act of 1932 an Appeal Tribunal which was created under that Act
took the place of the Law Officer to whom appeals had lain under the previous
acts. The similar material words still appear in Section 11(3) of the 1932 Act
in the following form ' “the opponent, if the opponent is, in the opinion of the
Tribunal, a person entitled to be heard in opposition to the grant of the patent
Moreover just as was the case under the Act of 1883 there is still,
curiously enough, no similar proviso inserted in Section 11(2) which refers to the
hearing in the first instance before the Comptroller. Neither is there in this
section any specific reference to any precise degree of interest required nor is the
word “interest*' itself used at all in the section ; and the bare words “any
person*' are retained, unqualified, so that on the face of the section alone, apart
from the manner in which it has been construed in the cases, there is no indica-
tion that it is not open to any member of the public to oppose.
But since the material wording of the new Statutes is the same as that of
the Act of 1883, the decisions in the cases throughout continue to be as effective
as ever. By these decisions it has become a settled rule of law that none but
a person interested can oppose. The 1932 English Rules also postulate that the
opponent must have a certain degree of interest in opposing the grant : by
expressly demanding that an opponent in proceedings of opposition to grant shall
in his Notice of Opposition set out fully the nature of his interest. See Rule 43.
Thus at the present day there is no doubt as to what the Law is on this
point in England and it has long been settled that an opponent must have a
certain quantum of interest both before the Comptroller and before the Appeal
Tribunal. The only matter on which doubt can arise in cases at the present
day in England is whether in a particular case a particular opponent has
sufficient interest to entitle him to oppose or not.
9 In the previous Indian Rules of 1912 the corresponding Rule was Rule
No. 15(1) which was worded as follows
“Within 14 days of giving notice of opposition the opponent may, and
shall, if at any time so required by the Controller, leave at the Office a full written
statement in duplicate of the reasons for, and extent of, his opposition, and of the
grounds upon which he relies in support of his opposition”. In that rule there was
no such express mention of the interests of the opponent : though the general
words “the reasons for and extent of his opposition” might have been said to
include a statement of the nature of his interests.
Ch. X]
WHO MAY OPPOSE
403
only interested persons may oppose, it must, it is submitted, now
(in any case since 1933 whatever the position was before), be clear
that in India also the practice is to be that only those persons may
oppose who have a certain quantum of interest in the Patent which
they are opposing. If this is so, the words “any person” in Section
9 of the 1911 Indian Act must be construed not to mean any person
in the sense of the public at large, but to mean only “any interested
person”.
It is submitted that this is the meaning which the words have
acquired in India just as they have in England : in spite of the
difference that in India the precise reasons which may have influ-
enced the construction of the words in England never existed.
It may well be that the peculiar reasons 3 for the peculiar construc-
tion which the words acquired under the 1883 Act in England were
attributable to the peculiar history of earlier patent administration
in England and to the caveat system before 1852 and to the wording
of the Act of 1852 thereafter up till 1883. It may well be that
those peculiar reasons never existed at all in India ; since the
caveat system never existed and there was no act of which the
wording corresponded to the English Act of 1852. It may well be
that it might therefore be said that since the wording of the present
act of 1911 has it that “any person” may oppose, therefore the
words should carry their face value. This may be a matter for
discussion in some future oase. Until however there is definite
authority for the view that the Rule («.e. Rule 21(1) is either ultra
vires or at least unnecessary and that the system in India is to
differ in this important respect from the system in force under the
precisely similar wording of the Act and Rule now in force in
England, it must be assumed that the two systems are intended
to be the same in this matter.
As to the nature ol the interest which it is necessary that the
opponent shall have.
The interest need not be a manufacturing interest but it must
be a real definite and substantial interest. In one case it has been
held that a mere agent’s interest would not be sufficient to entitle
him to oppose the grant. It has also been held that the mere posses-
sion and use of a particular article said to be covered by the Patent
See page 399 above Note (1).
404
THE LAW OF PATENTS IN INDIA
[Ch. X
applied for is not sufficient. The material time at which the
opponent must show that he has a sufficient interest is the time
when the opposition is heard. These principles have been enunciated
in the following cases.
(i) See Rene ClaveVs Application . 4 The Patent applied for
related to improvements in dyeing and printing products made from
Cellulose acetate. The opponents had set out their interest (under
the English Rule 43) in effect as large manufacturers exporting
large quantities of acetate silk from France to England and as
patentees of numerous British Letters Patents for the manufacture
and treatment of acetate silk”. The question whether the opponent
had sufficient interest had come up before the Comptroller-General
as a preliminary point. He had decided the opponent had sufficient
interest ; and that the opposition should be allowed to proceed.
The applicant appealed to the Law Officer. On such appeal the
Solicitor-General (Sir Thomas Inskip) made in the course of his
decision the following observations : — “There is no dispute that
they do manufacture acetate silk, and I should infer from that fact
that they are interested in ordinary commercial processes, including
dyeing, for making their wares marketable. By the expression
interested in” I do not necessarily mean that they own such pro-
cesses : I merely infer that the treatment including the dyeing of
acetate silk is a matter of business concern to them as a commer-
cial firm. Sir Duncan Kerly enunciated certain rules which he
asked me to adopt and apply in this case. He admitted that a
trading interest as well as a manufacturing interest is enough to
confer a locus standi to oppose, but he said that it must be an
interest in this country and an existing interest and such an interest
as will be interfered with if the Applicant receives a grant. Assum-
ing these to be the right tests of an interest for the present purpose,
Sir Duncan Kerly said that the Opponents neither allege an actually
existing interest in this country, either as traders or manufacturers,
nor do they say that their interest will be interfered with if the
Patent is granted.
Three cases were cited on behalf of the Applicant. In a
Ruling of the Comptroller- General* 1911 (B) reported in 28. R. P. C.
Appendix No. 1, page iii, the broad principle is asserted that a bona-
(1928) 45. R.F.C. 222.
Ch. X] INTEREST WHICH THE OPPONENT MUST HAVE 405
fide manufacturing interest is a sufficient interest, subject, however,
to certain qualifications. It must be an existing interest and it must
be shown to exist in an actual field of manufacture of sufficient
similarity to the applicant’s to justify an inference of damage to
him if the agplicant receives a grant. In a later case, Tn the matter
of an Application hy New Things, Ltd., s Sir Stanley Buckmaster,
having held that it was not necessary to have what is called a
manufacturing interest said : “A trading interest would also be
sufficient, but the interest must be a real definite and substantial
interest and must not arise from something that the opponent
proposes to do.” The qualification contained in the last sentence
was introduced in that case with reference to the facts of that case.
It seems to me to be only one particular way of stating the converse
of the rule expressed in the first half of the passage that I have
cited. I accept Sir Stanley Buckmaster’s statement as meaning
that a person who merely proposes or intends to manufacture or
trade in the article in question has not a real definite and substantial
interest. The third case cited by Sir Duncan Kcrly was Jn re Whee-
ler' 8 in which I applied to the facts of that case the rule as
laid down by Sir Stanley Buckmaster, and I added that the question
whether there is a real substantial and definite interest muBt be
decided on the facts of each case.
On the facts as they admittedly are, and in view of the in-
ference which I draw from those facts, I have come to the conclu-
sion that the Opponents have a real definite and substantial interest
to entitle them to oppose. As I have come to this conclusion on the
facts of this case as I view them, it is not necessary for mo to consi-
der other hypothetical cases. My conclusion is, I think, consonant
with the case reported in 29 R. P. C. as Rnliny 1912 (B), cited by
Sir Arthur Colefax, but I do not accept the proposition submitted
by Sir Arthur that every opposition which is not frivolous, vexa-
tious or blackmailing ought to be admitted. I think that is much
too wide. I therefore dismiss the appeal”
(ii) See Wheeler’s Application 7 in which case the Solicitor-
General (Sir Thomas Inskip) held that “a trading interest would be
» (1914) 31. R. P. 0. 45.
* (1925) 42. R. P. C. 509.
’ (1925) 42. R. P. G. 509.
406
THE LAW OF PATENTS IN INDIA
[Ch. X
sufficient, provided the interest is real, definite and substantial.” In
commenting on Sir Stanley Buckmaster’s dictum in New Things
Limited 8 which was to the effect that “a trading interest would be
sufficient, but the interest must be a real definite and substantial
interest and must not arise from something the opponent proposes
to do”, he said : — “If the agreement in question was before me, I
could form my opinion as to it, and if it had been an agreement by
which the Opponent’s firm had the sole right to purchase the whole of
the output of these manufacturers in the United States so that they
became the owners of the goods, then I should probably have been
inclined to think that the Opponent has sufficient interest. I think
for this purpose it is unnecessary for me to say whether Sir Stanley
Buckmaster’s dictum is a complete or accurate statement of what is
sufficient interest, but I am bound to say I think it is a very reason-
able view to take that a trading interest would be sufficient, provided
the interest is real, definite and substantial. The question as to
whether there is a real, substantial and definite interest must be
decided on the factB of each case. In this case I do not know and
I very much doubt whether the Assistant Comptroller knew the
precise facts, and I am hot prepared to say that the Opponent has
shown that he has a real, substantial and definite interest. It may
be that the position of the Opponent is merely that of an agent in
the ordinary sense of the word, or perhaps a del credere agent, for
the purpose of putting these things upon the market in this country,
in which case the interest would really be the interest of the prin-
cipals from whom he gets the goods and not his interest. I am,
therefore, not satisfied that he has an interest which entitles him
to oppose, and I dismiss the appeal.”
(iii) See New Things Ltd : Application , 8 In that case the
Comptroller-General on the reasoning that any person who is bona
fide and honestly in possession of an article which may reasonably
be held to fall within the scope or claims of the Patent applied for,
has a sufficient interest to oppose the grant, and relying on the
broad principle which was laid down in the Rulings 1912(B) and
1912(C), had held that the opponent had sufficient interest. The
Applicants for patent appealed. On such appeal the Solicitor
» (1914) 31. R. P. C. 45.
• (1914) 31. R. P. C. 45.
Ok. X] NEED NOT BE A MANUFACTURING INTEREST 407
General (Sir Stanley C. Buckmaster) allowed the appeal ; holding
that the opponent had not sufficient interest. His decision whioh is
of interest, may be cited here in full :
“The question is whether such possession and use of the screen
confer on him an interest sufficient to support an Opposition to the
grant. I may say at once that having considered all the cases to
which my attention has been called, I am not prepared to limit the
interest which an Opponent must show in order to bring himself
within the class of persons qualified to give Notice of Opposition
under Section 11, to what is called a manufacturing interest. I think
that is a mistake. A trading interest would also be sufficient, but
the interest must be a real definite, and substantial interest, and
must not arise from something that the Opponent proposes to do.
So far as the present interest of the present Opponent is concerned
it is nothing but the possession and use in the manner which I have
mentioned of this particular screen. The rest of his interest arises
from something that he intends to do in the future, and which he
may or may not accomplish, it appears to me that intention gives
him no more right to oppose than a man saying that he intended in
the future to make a patented article would give him the right to be
heard. 1 have, therefore, to consider whether the use of the screen,
as he at present possesses and uses it, is a definite and substantial
interest entitling him to oppose. I am unable to find that it is. It
appears to me that it is no more than the ordinary possession and
use of a particular article said to be covered by the Patent applied
for, and I do not think that the mere fact that a man is in possession
of such an article gives him the right to appear and oppose under
Section 11. For example, if a man were using a golf ball which it
was said would infringe a Patent for which an application was made
in respect of golf balls, I do not think that would entitle him to
come in and oppose, because it is obvious that when once the area of
the class within which Opposition is permitted is extended so as to
include all people who use — as opposed to those who make or trade
in — a particular article, there would be no check on Oppositions
which might be of a fictitious and an unreal character. For the
present, it is sufficient for me to say that nobody suggests that the
Opposition here is of that character, but, on the other hand, it would
be impossible for me to permit this Opposition without at the same
time, letting in such a class of Opposition as that to which I have
406
THE LAW OP PATENTS IN INDIA
[Ch.X
referred. Therefore, I am of opinion that the present Opponent
has not got sufficient interest to enable him to oppose the grant of
this Patent. I must overrule the decision of the Comptroller and
decide that this Opponent has no locus standi. I think this is a
new case, and a case which it was quite right should be dealt with
before me, and, in the exercise of the discretion which I possess,
I make no order as to the costs.” 10
(iv) See Comptroller- General's Ruling 1912 (B). n In that case
the opponent was a person who had applied (at a date subsequent to
the Applicant’s application) for a Patent on similar lines to that of
the Applicant. The material part of the decision of the Comptroller
General who held that the opponent had sufficient interest was as
follows : —
“Having regard to these various considerations, I have come
to the conclusion that while some restriction ought to be placed on
the right to oppose upon the new ground of opposition, in order to
prevent vexatious or blackmailing proceedings being commenced by
the mere “man in the street”, it is on the other hand desirable that
the right should at any rate be extended so as to include all those
who can show bom fide and satisfactory reasons for wishing to
oppose. The reasons should, in my opinion, show a personal and
practical interest in the opponent and give reasonable grounds for
apprehending that the grant of patent rights in their present form
to an applicant would be immediately or directly prejudicial to the
interests of the opponent. The claim by an opponent that his
interests arc directly affected or prejudiced will, of course, have to
be scrutinised in each case. I think it is enough for the present
decision to say that it would be sufficient to show that some existing
right or interest might be prejudicially affected. If this is the
right principle, I think it is clear that the Opponent in this case has
a good locus standi to oppose. Fie is admittedly applying for Patent
rights for a somewhat similar invention upon the same lines, and
the Applicant’s Specification has already been cited against him
under Section 8. His right to obtain a Patent is therefore directly
and immediately affected *, and he has a clear interest in obtaining
if possible, the removal of any doubt or verbal ambiguities from the
10 See also Comptroller's Rulings 31 R. P. C. (A) ; and 30 R. P. G. (B).
w (1912) 29. R. P. C. (Appendix) p. (y).
Ch. X] AN INTEREST AT THE TIME OF HEARING SUFFICES 409
Applicant’s Specification. I hold therefore that he has a sufficient
interest to raise the ground of opposition under Section 11 (1) (c) in
this case.”
(v) See : Comptroller- OeneraVs Ruling 1912(C). 12 In that case
the opponent was an applicant for Letters Patent in the United
Kingdom of which the Application had been filed after the opposi-
tion had been entered. Under the International Convention the
opponent claimed for his patent if granted a date one day earlier
than that of the filing of the second of the two Provisional Specifica-
tions of the Applicant. The material portion of the decision is in
the following words : —
“With regard to the point that the interest was not present at
the time the Opposition was entered, I think it is sufficient for the
Opponent to be able to show a bona fide and existing interest at the
time when the Opposition is heard. In any case, in the present
instance the Opponent had applied for and obtained Patent rights
abroad, and therefore had valid and existing rights under the Con-
vention to make an Application here at the time when Opposition
proceedings were begun.”
“It is clear that where the subject-matter of the invention is
similar, a subsequent applicant for Patent rights has a definite
interest, not only in clearing up any ambiguity in the language of
a prior Specification, but also in limiting its scope and Claims, if it
is possible to do so, whether by amendment, disclaimer or other-
wise. He falls therefore within the general principle, that where
bona fide and existing rights are imperilled, any person should be
allowed a locus standi to oppose. Although therefore a decision is
not directly necessary in the present case, as the. case of prior
patenting was not in fact pressed by the Opponent, I think it right
to state my opinion that the Opponent has made out a sufficient
interest in this case to raise an opposition on the ground defined by
Section 11(1)(6).” 13
l * (1912) 29. R. P. O. (Appendix) p. vii.
la See also Comptroller' 8 Ruling (B) reported in 28 R. P. C. (Appendix) p. iii.
For the present purposes it is unnecessary here to discuss further the
decisions in earlier cases such as : Exparte Tomlinson (1899) 16 R. P. C. 233 ;
Meyer 1 8 Application (1899) 16 R. P. 0. 526 ; Stewart's Application (1896) 13
R. P. 0. 627 (in which it was held by the Attorney-General (Sir Richard Webster)
that an interest in a similar patent which had lapsed was sufficient): Morgan 's
52
410 THE LAW OF PATENTS IN INDIA [Oh. X
*
The same degree of interest may qualify an opponent to oppose on
all grounds.
It is submitted that when once the opponent has established
that he has sufficient interest to entitle him to oppose the grant of
the Patent to the Applicant, the opponent then becomes entitled to
oppose on all grounds which are in any circumstances open to an
opponent in opposition proceedings. So that it will then be im-
material whether or not the opponent has any direct interest in the
matters involved in any particular ground on which he wishes
to rely.
Amendment to change the identity of the opponent not allowed.
In a case where the opposition proceedings were instituted in
the name of one person who was found to have no sufficient interest
and an application was made to the Comptroller to amend the
Notice of Opposition by substituting another person as opponent,
it has been held that such amendment was not permissible. 14
Not usually taken as preliminary point.
While it would seem that if it is desirable in any particular
case that the point that the opponent has no sufficient interest to
entitle him to bo heard may be decided as a preliminary point, yet
in practice this course is not usually adopted. 15
Grounds under Section 9 now available in India in opposition
proceedings.
The grounds on which the grant of a Patent may at the pre-
sent day be opposed in India before the Controller are stated in
Section 9 of the Indian Patents & Designs Act of 1911 to be any of
the following : —
“( a ) that the applicant obtained the invention from him, or
from a person of whom he is the legal representative or
assign ; or
(6) that the invention has been claimed in any specifica-
Patent (1888) 5 R. P. 0. 186 ; Adolf Spiel’s Patent (1888) 5 R. P. C. 281.
Bairstow's Patent (1888) 5 R. P. C. 286 ; and the cases reported in Olossop’s
Patent Gases at page 285 and at page 288.
14 See Heath <Sb Frost's Patent Griff. P. C. 288 at page 290 cited in Terrell
(8th edn.) at p. 189.
14 See Eeni Glavel’s Application 45 R. P. C. 222 at 223.
Ch. X]
GROUNDS FOR OPPOSITION
411
tion filed in British India which is or will be of prior
date to the patent, the grant of which is opposed ; or
(c) that the nature of the invention or the manner in wbioh
it is to be performed is not sufficiently of fairly des-
cribed and ascertained in the specification ; or
id) that the invention has been publicly used in any part of
British India or has been made publicly known in any
part of British India ; but on no other ground.”
The grounds therefore directly within the Section which it is
open to an opponent to take in opposition proceedings are simply
these : —
(i) Want of novelty : in any category. For the wording of
Section 9(d) appears to be wide enough to cover want of novelty
both for common knowledge as well as for public knowledge. It
appears also to be wide enough to cover want of novelty by public
knowledge whether this is shown to be due to documentary publica-
tion of any sort and in any form of document, or to oral publica-
tion, or to prior user. This being so, no further grounds are added
at all, in respect of want of novelty, by Section 9(b). For a consi-
deration of what is required to be shown in order to establish want
of novelty under Section 9(d), reference may be made to Chapter VI,
Part III where this topic has already been fully discussed. 19
(ii) Prior grant : The wording of Section 9(b) may be treated
as affording a ground of opposition on an objection on the ground
of prior grant. For a consideration of the circumstances in which
such an objection will lie, reference may be made to Chapter VI,
Part III. 17
(iii) Insufficiency : in any category. For the wording of
Section 9(c) is wide enough to cover both insufficiency of descrip-
tion in all requisite respects as to how the invention is to be per-
formed and insufficiency in the delimitation of the ambit of the
monopoly. For a consideration of what is required to be shown
in order to establish insufficiency under Section 9(c) reference may
be made to Chapter VII, Part I where this topic has already been
fully discussed. 18
16 See pages 169 & 216.
11 See page 217.
** See page 296.
412
THE LAW OF PATENTS IN INDIA
[Ch. X
(iv) “Obtaining” : that is to that the Applicant for Patent
obtained the invention from the opponent or from a person of whom
the opponent is the legal representative or assign : under Section
9(1) (a). For a further consideration of the circumstances in which
such an objection will lie, reference may be made to Chapter VII,
Part III. 1 ®
It will be seen hereafter that in spite of the words “but on no
other ground” with which Section 9(1) ends, nevertheless certain
other grounds, which are important, are actually in practice open
at this state : such additional grounds being available by virtue
of certain general principles of Patent Law » either altogether
independently of the provisions contained in the Section, or because,
through the existence of such general principles it has been held
to be necessary to read an enlarged meaning into the wording of
Clause (c) of Section 9(1).
Construction of Section 9(1) (c) : An objection of “no manner of
new manufacture” is by implication also included.
The ground of objection contained in Section 9(l)(c) of the
Indian Act, as it is worded, certainly appears on the face of it
merely to refer to an objection of insufficiency of description. It
is certainly not worded on the face of it so as to include an objec-
tion that “the alleged invention is not a manner of manufacture.”
If the question of the construction of this sub-section were
at large and free from any previous decision a reasonable view at
first sight for the man in the street to take of it would be that it is
intended to refer to an objection of insufficiency of description only :
such objection to be advanced for reasons which could be urged
only on the assumption that there was otherwise a patentable inven-
tion. That is to say that it is an objection solely that the invention
is insufficiently described, independently of any objection as to the
subject-matter of the invention : independently of any question
whether or not the alleged invention does or does not comprise a
manner of new manufacture. But as soon as the question of insuffi-
ciency of description is gone into in any detail it is found that it is
very difficult, if not impossible, to come to any decision on the
question whether or not the alleged invention is sufficiently des-
cribed without first deciding the preliminary point whether the
*• See pages 263 to 267.
Cb. X]
CONSTRUCTION OF SEC. 9(1)(C)
413
alleged invention is a manner of new manufacture or not. For the
description to be sufficient the description must properly describe
and delimit the ambit of the invention showing that not more than
what is properly claimable as a monopoly is described. But if
nothing is properly claimable as a monopoly, as will be the case if
the alleged invention is for something which is not a manner of new
manufacture, then it becomes difficult to decide whether any ambit
is properly delimited. It is on such reasoning, it seems, that the
judgment in Ex parte Muntx (cited below) and the subsequent cases
following that decision rest. Section 9(1) of the Indian Act (quoted
above) is substantially indistinguishable from Section ll(l)(c) of
the English Act ; which is worded as follows : — “that the nature
of the invention or the manner in which it is to be performed is not
sufficiently and fairly described and ascertained in the complete
specification/’ The point has given rise to much discussion in the
English cases : but the construction to be put upon Section ll(lXc)
of the English Statute may now be taken, it seems, as well settled.
This being so, it is submitted that it must be taken as equally
well settled in law that Section 9(lXc) of the Indian Act embraces
within its language an objection that the alleged invention was not
a manner of new manufacture.
See I. O. Farbenindustrie Aktiengesellschafl : Application . 2#
The application was for a Patent in respect of “Improvements
relating to the manufacture of Artificial Threads Bands, Films or
the like.” The opposition was argued on the ground that there
was “no manner of new manufacture” in the patent applied for.
It was contended on behalf of the Applicants for the patent that
an objection that there was no manner of new manufacture, was
distinct from the objection which might be taken under Section
ll(lXo) and was not open to the opponents. The matter came
before Luxmoore J. on appeal ; the following extracts of his
judgment on this point may be noted : —
“The grant was opposed before the Comptroller by the British
Enka Artificial Silk Company Limited and by the British Celanese
Limited. The British Enka Artificial Silk Company Limited having
succeeded in obtaining the deletion of the comma were satisfied with
the decision, but the British Celanese Limited appeal from it and
90
(1933) 5a R. P. 0. 249.
414
THE LAW OF PATENTS IN INDIA
[Cb- IX
ask that the grant of a patent be refused on two grounds, first
because the Specification discloses no new method of manufacture,
and secondly because there is no novelty in the invention described
in and claimed by the Specification, and in this connection they rely
on Letters Patent Nos. 149,296 and 241,948.
The Applicant-Respondents contend that the first ground is
not open to the Appellants in these proceedings, because it does not
fall within any of the grounds of opposition specified in Section
11(1) of the Consolidated Acts. If the Appellants arc entitled to
raise and rely on this contention and such contention is well founded
the second point is immaterial. The proceedings arc opposition
proceedings. The grounds available to an opponent are those
limited by Section 11, sub-section 1 of the Consolidated Acts. This
sub-section provides that any person may on the terms stated give
notice of opposition to the grant of a patent on any one or more
of six specified grounds which are set out in the sub-section under
the headings (a), (b), (bb), (c), (d) and (e) respectively.
The sub-section ends with the words “and on no other ground”.
It is plain that, so far as an opponent is concerned unless his
opposition can be brought within one of the six specified grounds,
he has no locus standi under Section 11. It was admitted by Sir
Arthur-Colefax, and I think quite properly, that it was not possible
to bring this case within any v of six specified grounds other than
that comprised in sub-heading (o). Sub-heading (c) is in these
words : — “that the nature of the invention or the manner in which
it is to be performed is not sufficiently and fairly described and
ascertained in the complete specification”. He argued that there
can be no sufficient or fair description or ascertainment of an inven-
tion if there is in fact no new method of manufacture, and he relied
on the definition of “invention” contained in Section 93 as meaning
“any manner of new manufacture the subject of letters patent and
grant of privilege within Section 6 of the Statute of Monopolies and
including an alleged invention”.
“In my judgment this argument is well founded, and I accord-
ingly hold that it is open to an opponent under Section ll(L)(c) to
oppose the grant of a patent on the ground that the specification
disoloses no new method of manufacture. I respectfully accept
and rely upon the decision of the Divisional Court in The King
Ch.X]
ITS ENLARGED MEANING
415
v. The Comptroller General of Patents {ex parte Muntz) 21 in
support of this view. In that case the Comptroller-General had
refused an application for a patent on the ground that no paten-
table invention was claimed by it. The applicant for Patent had
obtained a rule nisi for mandamus addressed to the Comptroller
General to hear and determine according to law his application for
a patent. The ground of the application was that the Comptroller
General had exceeded the jurisdiction conferred on him by the
Patents and Designs Acts, 1907 to 1919, by refusing to grant the
patent on the ground stated above. Lord Chief Justice Hewart in
bis judgment discharging the rule called attention to the definition
of invention in Section 93 referred to above and to Section 6 of the
Statute of Monopolies which makes it plain that what is referred to
as an invention is “some manner of new manufacture.” He also
referred to Section 3, sub-section (2) of the Patents & Designs Act,
1907. This sub-section provides for the refusal of an application
for a patent if the examiner to whom the application is referred
reports that “the nature of the invention is not fairly described or
the manner in which it is to be performed is not therein particularly
described and ascertained.” These words are in substance indistin-
guishable from the words of Section ll(lXc). The Lord Chief
Justice said “the whole matter starts with an application which con-
tains a declaration to the effect that the applicant is in possession of
an invention and the argument of the prosecutor here involves this
proposition, that although it may well be the duty of the examiner
to report whether the nature of the invention is or is not fairly des-
cribed, it is not open to him to say that what is put forward as an
invention is not an invention at all. In my opinion the question
whether the alleged invention is an invention in the sense of being
some manner of new manufacture is clearly a question which may be
reported upon within Section 3.” Mr. Justice Avory expressed his
entire agreement with this construction placed by the Lord Chief
Justice on Section 3 and added these words : — “It seems to me
almost an absurdity to say that, if an Examiner may report that the
nature of the invention is not fairly described, he may not report
that that which is put before him is not an invention at all. If it is
not an invention at all, it is impossible that the nature of the inven-
(1922) 39. R. P. 0. 335.
416
THE LAW OF PATENTS IN INDIA
[Ch. X
tion can be fairly described.” I can see no ground for saying that
any different consideration should apply to the construction to be
put upon what are in substance the same words found in Section
ll(lXc). The question therefore arises whether the Specification in
fact discloses a new manner of manufacture.”
See James Yate Johnson's Application < 22 In that case on
appeal from a decision of the Comptroller refusing the grant,
the Solicitor-General ( Sir James Melville ) upheld his decision.
During the hearing of the appeal the question was specifically raised
whether it was open in such opposition proceedings for such an
objection to be taken as was outside the grounds mentioned in
Section 11. The decision of Sir James Melville is of considerable
interest : the purport of which will be sufficiently apparent from the
following extracts bearing on the point now under consideration : —
“This is an appeal by the Applicant from the Decision of the
Assistant-Comptroller whereby he refused the Application for a
Patent. The invention relates to the manufacture of rubber products
by a process of synthesis starting with acetylene and subjecting it
to successive chemical operations which gradually build it up by
adding carbon or hydrogen to the original substance, there being
actually five Bteps in the process. The Opposition was on the
grounds of prior publication in British Specifications Nos. 17193
of 1913 and 211,125 and of insufficient or unfair description.
The application was refused by the Assistant-Comptroller on
the ground that there is no patentable invention in selecting a
material derived from a particular source as an ingredient in a
known process, the material here being acetylene derived from
methane and the process being that described in Dreyfus’ Specifica-
tion No. 17193 of 1913. The process described in Dreyfus’ Speci-
fication is open to use by the public, as no Patent was sealed
thereon. Even if a Patent had been sealed, it would now have
expired by lapse of time.
It has been known for many years that acetylene can be
obtaiued from methane, one method being described in the cited
Specification No. 211,125. The Assistant-Comptroller considered
that to grant the Applicant a monopoly forbidding the public,
(1930) 47. R. P. 0. 519.
Cta. X] COVERS AN OBJECTION OF “NO MANNER OF MANFR.” 417
when using the process prescribed by Dreyfus, to employ acetylene
obtained in any known manner from methane or from gases
containing methane would be contrary to the provisions of Section
6 of the Statute of Monopolies as being hurtful of trade or generally
inconvenient. Mr. Swan, who appeared for the Applicant, did not
dispute the Opponents’ contention that the five-step process is
disclosed in Dreyfus* Specification, nor that it is known to obtain
acetylene from methane. But Mr. Swan put forward this dual
argument. He says in the first place that the grant of a Patent can
only be opposed upon one or more of the six grounds that are
specified in Sub-scction (1) of Section 11 and that the Assistant-
Comptroller has refused the Patent upon a ground that does not
appear in Section 11 and the refusal is therefore ultra vires . He
says, secondly, that this invention is in essence an invention by
selection
As regards the objection raised by Mr. Swan that it was
neither open to the Opponents to object to the grant on the ground
that no manner of new manufacture is disclosed nor to the Comp-
troller to refuse a Patent upon that ground, I think that two obser-
vations must be made. First, I would point out that Opposition
was entered on two grounds. The first ground was that of anticipa-
tion in the two prior Specifications to which I have already referred.
The second ground was that “the nature of the invention or the
manner in which it is to be performed is not sufficiently or fairly
described in the Complete Specification.” In considering the meaning
of the words “that the nature of the invention is not fairly des-
cribed,” as used in Section 3(2) of the Acts, it is to be observed
that it has been definitely laid down that those words involve a
consideration of the question whether that which is described in
the specification is some manner of new manufacture. The point
was considered by the Divisional Court in the case of The King v.
Comptroller- General of Patents (Ex-parte Muntz ) 23 (Sir James
Melville then proceeded to cite the passage in the judgment
of Lord Hewart which has already been referred to at p. 415 above
and proceeded). If the words used in Section 3(2) are to be so inter-
preted, I can see no reason why the same interpretation should not
equally be applied to the same words, as used in Sub-section (1) (c)
a * (1922) 39. R.P.C. 335.
53
418
THE LAW OF PATENTS IN INDIA
[Cta. X
of Section 11, and, if so, an opponent is not precluded from raising
this fundamental objection as to the non-patentability of an alleged
invention.
But, quite apart from this question as to the right of an
Opponent to raise this issue, there is another aspect of the subject,
and it is one that in my opinion would of itself justify the Assistant-
Comptroller in resting his Decision on the ground that the Specifi-
cation discloses no invention within the meaning of the statu-
tory definition. It was held by the Law Officer in the case of S’s
Application 24 that the words "manner of new manufacture” used
in the definition of an invention contained in Section 93 of the
Acts must be read as a whole. It is not legitimate to ask first :
Is this a manufacture and to relegate to the limited enquiry
made under Section 7 the further question : “Is it new?” Moreover,
there is authority in the case of Wadham’s Application , 25 and
in Hughes & Kennaugh’s Application, 2 8 for saying that when
the Comptroller is dealing with a Specification in Opposition
proceedings, the rights of the public must be considered, and
the Comptroller has jurisdiction to act in the interests of the
public even though the Opponent may fail as regards his own
presentation of the case. In Hughes & Kennaugh’s case Sir Samuel
Evans used these words : “I see no reason why the Comptroller
should be restricted to information given to him by an opponent or
why he should not be entitled to avail himself for the public benefit
of the information of the Patent Office. Whatever has taken place
before the acceptance of a Specification under Section 7, 1 think
the whole question of whether the patent ought to be granted and
upon what terms, was open upon the hearing of the Opposition —
just as it would be open upon the hearing of an appeal by the Law
Officer under Sub-section 3 of Section 11.”
In view of these authorities, I do not think that it can be
contended that it is not within the inherent jurisdiction of the
Comptroller or the Law Officer to refuse to grant a patent upon an
Application which is clearly in contravention of the provisions of the
Acts. To quote the Ruling by the Comptroller-General in Wain-
» 4 (1923) 40. R.P.C.461.
a * (1910) 27. R. P. C. 172 at page 174, lines 23 to 27.
*• (1910) 27. R. P.O. 281.
Ch. X]
OBJECTION OF “NO INVENTIVE STEP”
410
wright’s case : 2T “The Comptroller — like any other Judge or Court
of Justice — must have the general and inherent powers of preventing
a fraud being committed upon the public. In the case of a grant of
a patent the Comptroller is administering a special prerogative of
the Crown, and I cannot think that he is compelled to allow a grant
of patent rights where under the special circumstances of the case
the grant would be admittedly bad, or be in effect a fraud upon
the public or the Crown.” I accept and re-affirm that Ruling.
In the present case the use of acetylene obtained from methane
may no doubt be advantageous, but there appears to me to be no
invention involved, and I agree with the Assistant-Comptroller that
the Application should be refused. In the result I dismiss the
Appeal and I award the Opponent twelve guineas costs.”
Whether any other objections similarly may be indirectly included
by similar implication in Section 9(l)(c).
It being then settled law, as already observed that an objection
for want of subject matter for “no manner of manufacture” may be
included by implication under Section 9(lXc) a question then arises
what other objections, if any, there may be which may also be
included within the enlarged meaning of the sub-section by similar
implication.
Whether an objection of “no inventive step” is also included
within any enlarged meaning of Section 9(l)(c).
It being settled law that for the reasons shown, an objection
for want of subject matter (that the alleged invention docs not cons-
titute any manner of new manufacture) is thus included by implica-
tion under the terms of Clause (c) of Section 9(1), a question then
arises whether other objections for want of subject matter may
similarly be included by similar implication.
Does an objection for want of subject matter that the alleged
invention shows no inventive step also stand on the same footing :
so as to be equally available to an opponent ?
On the one hand it may be argued that if there is no inventive
step, obviously there cannot be any invention : and, if no invention,
then obviously it canuot be said that the invention is sufficiently
described : the same argument which has prevailed in regard to the
" Baling 1912 (E), 29 R.P.C. Appendix, xi.
420
THE LAW OF PATENTS IN INDIA
[Ch. X
objection for no manner of manufacture. In support of this argu-
ment such observations as those in Wain wright’s case may be relied
on — “that there was no invention involved and it may be said
that such observations show that the Court or the Comptroller in
arriving, on the general question, to a conclusion that there was no
manner of new manufacture, in fact only arrived at such conclusion
by considering also this question whether there was any inventive
step ; and that in fact it was only because they held there was no
inventive step that they were able to arrive at the conclusion that
there was no manner of new manufacture. On this argument it may
be said that once it has become settled law that the question of
subject-matter as to the wide point of “no manner of new manu-
facture” is an objection which is open to be raised by an opi>onent
in opposition proceedings, it necessarily follows that it is also open
to him to raise the specific point “whether there was any inventive
step.”
(The two objections are certainly logically closely related. If
there is no inventive step, it follows there is no manner of new
manufacture, in the sense requisite to afford subject matter for a
patentable invention. Yet the non-existence of any “manner of new
manufacture” may in other cases be found to be due to causes quite
unconnected with any existence or non-existence of any inventive
step).
On the other hand it may be argued that in order to decide
whether there has been an inventive step or not in relation to any
invention entails going into a variety of subsidiary questions out-
side the specification itself, concerning evidence as to the state
of the prior art and as to the state of common knowledge and such
matters. That this is a different matter to raising a question merely
whether the alleged invention from its nature as described on the
face of the Specification is subject matter for a Patent in the sense
simply of being or not being a manner of manufacture within the
meaning of Patent Law. That where matters outside the specifica-
tion have to be investigated this cannot be treated as an objection
for insufficiency in -the description in the specification itself. And
that it cannot be supposed that an objection of that nature, though
unmentioned, is to be intended to be read into Section 9(1) (c) merely
by implication.
Ch. X]
“BUT ON NO OTHER GROUND'’
421
The point does not appear to have been positively decided ; and
is not free from doubt. If the construction of Clause (c) of Section
9(1) was free from all authority, a reasonable view it is submitted
would be, that an objection of “no inventive step” is not included in
this Clause (c) ; and that it is not open to an opponent in opposition
proceedings to agitate this objection, but that in certain circums-
tances it might well be open to the Controller to take the objection.
However in view of the decided cases, on the whole, it is submitted,
that this objection that there is “no inventive step in the alleged
invention” may also be held to be included by implication under the
terms of Clause (c) of Section 9(1). And that it may be permissible
for an opponent in opposition proceedings to agitate this ground
also before the Comptroller.
Concerning other objections for want of subject matter : such as
illegality : or immorality : or unfitness for the exercise of
the Crown’s prerogative : concerning objections for want
of utility : or objections for fraud.
A similar question arises, whether any of such objections may
be treated as being included by implication in any enlarged meaning
of Section 9(1) (c). Here again the matter is not free from doubt
in view of the ratio decidendi of the decision in Ex parte Muntx.
It is submitted however that none of these objections are properly
to be treated as being covered even by implication so as to be within
the terms of Section 9 (1) (c).
An opponent is debarred accordingly from agitating such
objections as grounds for his opposition proceedings under the
Section.
Whether any other objections may be raised apart from Section 9
(1) (e) : force of the words “but on no other ground.”
It is to be observed that the ratio decidendi of the decision
in Ex parte Muntx (cited above) was expressly stated to be that an
objection for “no manner of manufacture’' amounting to “no inven-
tion” was open to an opponent because the objection was by impli-
cation within a certain enlarged meaning of the wording of Section
9 (1) (c).
A different question also arises : how far if at all other objec-
tions, which cannot by implication be either included in, or related
422
THE LAW OF PATENTS IN INDIA
[Ch. X
to, the topic of insufficiency as stated in Section 9 (I) (c) may be
raised at this stage by virtue of any general or fundamental princi-
ples of Patent Law independently of anything stated in Section
9(1).
The crux of this matter is : what degree of force is to be given
to the words “but on no other ground” with which Section 9 (1)
ends.
This aspect of the matter was to some extent considered by the
Court in the case of In the matter of the Petition of International
Bitumen Emulsions Ltd. for the revocation of Dehn’s Patent. 26
This was a case where there had been a Petition for revocation
to the Controller : the Controller had refused to revoke the Patent
and the report is of the appeal against the Controller’s order before
the court. The Petition for revocation was of the nature of a bela-
ted opposition : being a Petition under Section 26 of the English
Patents Act. Thus such petition of revocation could under Section
26 only be made by the petitioner on the same grounds as he might
have opposed the grant under Section 11. Thus the decision may
be treated for the present purpose as if it was a decision in pro-
ceedings in Opposition to Grant. In that case the opposition of the
opponent as stated in his Petition was based on (a) prior publication
(b) invention not sufficiently or fairly described and (c) ambiguity
and uncertainty of claims : 29 V
One of the points taken in argument by Sir Arthur Colefax
in support of the Patent was to the effect that the opponent had
“wrongly tried to import into this case a point which arises out of
the Statute of Monopolies, namely, that there is no manner of new
manufacture ; the Court cannot consider such a matter as this upon
an appeal of this nature.” This point is dealt with, though shortly
yet definitely and clearly, by Luxmoore J. in his judgment which
finally leads up to the passage on page 379 line 18, an extract of
which is as follows : —
“The grounds of the appeal are stated to be that the Assis-
tant Controller was wrong in holding (1) that the
alleged invention had not previously been published,
(2) that the invention was sufficiently and fairly des-
»• (1932) 49. R. P. C. 368.
*» See p.375.
Ch. X] OBJECTIONS OUTSIDE SEC. 9(1) NOT OPEN TO AN OPNT. 423
cribed in the Complete Specification. (3) that the claims
were not bad for uncertainty and ambiguity. If ground
(3) is intended to refer to some ground other than the
ground referred to in (2) such ground is not in my
opinion, open to the Applicant for, as I said before, the
only grounds open are those set out in Section 11 of
the Consolidated Acts, and of those grounds the two
specified by the Appellant in the application are those
comprised under sub-sections (b) and (c) of the Section,
sub-head (b) covers ground (1) and sub-head (c) covers
ground (2).”
The point was more directly raised in regard to the construc-
tion of the words “but on no other ground”, in the case of H. A.
Metx Laboratories Inc. Application .- 30 In that case the Comptroller
had refused the grant because he held that the application fell within
the mischief of Section 38A of the English Acts, 1907-1932. On
appeal the following material words occur in the judgment of
Luxmoorc J. : —
“The second point is : Assuming that it is open to the Comp-
troller to consider the particular point at any time before the grant
is in fact made, can an opponent in opposition proceedings be heard
with regard to it ?
“So far as the second question is concerned, the rights of an
opponent in opposition proceedings are certainly limited : they are
laid down by Section 11 of the Consolidated Acts in quite clear and
explicit terms : there are certain heads to which I need not refer in
detail ; they are five in number and are set out in sub-section (1) of
Section 11. At the end of the sub-section are the words “but on
no other ground”. That, as I read it, is a statutory prohibition
against an opponent taking any ground other than those which are
set out in the sub-section.
Now what is said in this case ? The Opponents in their Notice
of Opposition rely on Section 11 (l), (b) and (c). (b) relates to prior
publication ; (c) is in the following words : “That the nature of
the invention is not sufficiently and fairly described and ascer-
tained in the complete specification.” These words have been given
a generous interpretation. The question in the present case is :
• O
(1933) 60. R. P. C. 365.
424
THE LAW OF PATENTS IN INDIA
[Cb. X
Do they include an infraction of the prohibition which is set out
in Section 38A which deals with cases where an application is made
for Letters Patent for an invention for which, apart from that
Section, Letters Patent would be granted. The Section says : if the
invention is of the particular nature there described, then the
specification shall not include claims for a substance, unless when it
is prepared or produced by methods or processes of manufacture
particularly described and ascertained. I can find nothing in
Section 11 which says that it is to be open to an opponent to object
to a specification on the ground that it does not comply with Section
38A. It is argued that I must construe Section ll(lXc) so as to
include this ground, because Section 38A deals inferentially with the
nature of the invention. I do not think that this is a proper cons-
truction of the Act. Section 38A prohibits the inclusion of certain
claims in the specification. In the absence of Section 38A, there
would in fact be no ground of objection to these claims. In my
judgment an objection to a grant because the specification infringes
the requirements of Section 38A is quite a different matter from an
opposition under Section 11 ; it is entirely outside the scope of that
Section and I do not think it is open to an opponent to rely on
non-compliance with Section 38A. The only ground for refusal of
the grant in the present case was non-compliance with Section 38A.
I think it was quite right for the Comptroller to take that ground
provided the case falls within thfe Section, but that is a different
thing from saying that the Opponent is entitled to put it forward.
In those circumstances I hold the Opponent has no right to com-
plain of the grant.”
It is submitted therefore that in opposition proceedings it is
not open to an opponent to raise any objections of any category
which cannot be said to fall under any of the four clauses of
Section 9(1).
The Controller is unaffected by the words “but on no other
ground”.
On the other hand it is clearly open, on the decisions last cited,
it is submitted, for the Controller to raise certain objections which
go to the root of the validity of the Patent on fundamental principles
even though such an objection may be outside the limits of Section
9(1).
Ch. X] OBJECTIONS WHICH MAY BE RAISED 425
As instances of such objections it is submitted that it would
be open to the Controller, at the stage of opposition proceedings, to
refuse to grant a Patent on his own initiative for an objection on
the ground of want of subject matter for illegality : or for want of
subject matter for immorality : or for want of subject matter for
unfitness for exercise of the Crown’s prerogative. It is submitted
that it will be in the same way open to the Controller also in a
proper case to refuse a grant at this stage on his own initiative on
the ground of fraud where such fraud is a deceit on the Crown.
Summary of objections which may be raised in British India in
opposition proceedings.
It may be convenient for purposes of reference now to state
here seriatim, as a result of the foregoing discussion, all objections
which are open to be raised at this stage : that is to say in opposition
proceedings.
These are : —
Such as may be raised by the opposer : —
(i) Want of novelty in any category and including prior
user : under Section 9 (l)(d) : see also Section 9
(1) (b) : and see page 411.
(ii) Prior grant : under Section 9 (b) : and see page 411.
(iii) Insufficiency in any category : under Section 9 (1) (c) :
and sec page 411.
(iv) Obtaining : under Section 9 (1) (a) ; and see page 412.
(v) Subject matter as to “no manner of manufacture” :
by implication under an enlarged meaning of Section
9 (lXc) : see page 412.
(vi) Subject matter as to “no inventive step : by similar
implication : (though this is doubtful) see page 419.
Such as may be raised only by the Controller in a proper case
but not by the opposer : —
(vii) Subject matter as to illegality : see page 424.
(viii) Subject matter as to immorality : see page 424.
(ix) Subject matter as to unfitness for the exercise of the
Crown’s prerogative : see page 424.
(x) Fraud amounting to a deceit of the Crown : see
page 424.
54
426 THE LAW OF PATENTS IN INDIA [Ch. X
Comment as to difference in grounds available in India and in the
Unitted Kingdom.
It has been seen that in India a ground of prior user is avail-
able while in England it is not. It may reasonably be submitted
that if it is the aim of the two systems of Patent Law to be worked
on a similar scheme, it would be more convenient for the two systems
to be made to conform. Under the present system in India in
practice it may entail a great volume of comparatively infructuous
work for the Controller to be compelled to adjudicate on such com-
plicated technical questions of fact as he may at any time be called
upon to do, so long as it is left open to an opponent to oppose a
grant on a ground of prior public user. In England it has been held
that even where an opponent bases his opposition on want of novelty
by reason of prior documentary anticipation, the proper procedure
in opposition proceedings is for the Controller to refuse to entertain
any protracted discussion on the question of such anticipation ; and
that he should rather in case of any doubt make the grant. The
reason for this is clear : since if he refuses to make the grant his
decision is final against the applicant, who, except for appeal,
has no remedy. Whereas if he makes the grant, his decision is in
no sense final against the opponent, who can always at later stage
apply for revocation of the Patent. This principle has not always
been applied in cases of opposition proceedings based on document-
ary anticipation before the Controller in India. In cases based on
prior public user it would probably be more difficult even than in
cases based on documentary anticipation to avoid a lengthy investi-
gation of technical facts : for this reason that from the nature of
things, it almost invariably follows that an opposition based on prior
public user will entail protracted questions of fact of technical
complexity. It is submitted that for the purpose of the practical
efficient working of the system, it would be more advantageous if the
ground of prior user now open to an opponent in opposition
proceedings were cut out of the Indian Act. This would also have
the advantage of bringing the Indian Act substantially into con-
formity with the English Statute.
Procedure to be followed in making opposition to grant.
The procedure now referred to is all subsequent to the accept-
ance of the application for Patent by the Controller and the adver-
Ch. X]
PROCEDURE IN OPPOSITIONS
427
tisement of the fact of such acceptance. The steps of procedure
which are laid down by Section 9 of the Act of 1911 and by the 1933
Rules made thereunder are then as follows : —
(i) Notice of opposition to the grant of the Patent is given
by the opponent at the Patent Office at any time within four months
from the date of the advertisement of the acceptance of the applica-
tion (Section 9 (1) : See also Rule 20).
(ii) The opponent is required within 14 days of giving such
notice of opposition to leave at the Patent Office his full written
statement. (See Rule 21 (1)).
(iii) The Controller gives notice to the applicant for Patent of
the opposition having been lodged. (Section 9 (2) and Rule 21 (2)).
Furnishing him with a copy thereof. He will also specify a time
within which the Applicant is to file his reply, if he wishes to do so.
(Sec Rule 21 (2)).
(iv) The Applicant for Patent within the time specified by the
Controller, may, if he so desires, file at the Patent Office a reply
(Rule 21(2)). The time for this will ordinarily be one month (Rule
21 (5)).
(v) The Controller gives notice to the opponent of the reply ;
and the Controller will specify a time within whioh the opponent is
to file his rejoinder, if he wishes to do so. (See Rule 21 (3)).
(vi) The opponent within the time specified by the Controller
may if he so desires, file at the Patent Office a rejoinder (Rule 21 (3)).
The time for this will ordinarily be one month (See Rule 21 (5)).
(vii) The Controller then on the expiration of the four months
allowed for notice of opposition, and after appointing a time for the
hearing, proceeds to hear the applicant and the opponent if desirous
of being heard, and to decide on the case (Section 9 (2) and Rule 22).
, The procedure outlined above is considered in detail under the
next following headings.
The prescribed fee.
This is Rs. 5.
Form of Notice of opposition.
This is form No. 6 : see Appendix No. 5 below.
By Rule 20 or the 1933 Indian Rules it is provided as follows :
428
THE LAW OF PATENTS IN INDIA
[Ch. X
“Notice of opposition to the grant, as to the amendment, etc. of
a patent shall be given in duplicate. One copy of the notice shall
be sent by the Controller to the applicant or his agent.”
Signing : verification : agency.
As to the form of the Notice of Opposition and its signature
and its verification see Sec. 75 of the Act of 1911 and Rules 7 & 8
of the 1933 Rules. On the wording of the Rules as they now stand
read with Section 75 it is necessary for the notice of opposition
to be signed by the opponent himself and to be verified ; and that
such verification also is to be by the opponent himself with a state*
ment that the facts and matters s tated therein are true to the best
of his knowledge, information and belief. The full statement of
opposition need not be signed by the opponent himself but can be
signed by his agent and need not be verified by anyone. When the
brevity and nature of the notice of opposition are considered it
seems somewhat anomalous that this should be the position : and
when it is considered that a common practice is to state as grounds
of opposition in the notice of opposition merely a word for word
statement of certain of the grounds mentioned in Section 9 of the
Act, any statement by an opponent that such grounds simpliciter
are true to Mb knowledge must be to some extent meaningless.
However this verification is required of him and it must be supposed
therefore to mean that he vouchesvfor the truth of the grounds only
in so far as they entail statements of fact without specifying how
far they do so, or what statements of what facts they do entail.
Full statement ot opposition.
Rule 21(1), it is observed, is mandatory and in every case of
opposition a full statement from the opponent is required. (The
practice in England is that such statement is filed at the same time
as the notice of opposition : under the English rules framed under
the English 1932 Act. In India this full statement may be put in
after the bare notice provided it is within 14 days thereof.) Such
full statement is to be filed in duplicate ; and in it the opponent
is required to set out fully the nature of his interest, the facts upon
which he bases his case and the relief which he seeks. The question
what grounds can be and what grounds cannot be taken in opposi-
tion has been fully discussed earlier in this chapter and in previous
chapters.
Ch. X] AGENCY 420
Signing : agency : no verification necessary.
Since the fall statement of opposition is not one of the docu-
ments falling within Section 75 but is covered on the contrary
by Section 76 of the Act of 1911, it follows that it need not be
signed by the opponent himself but may be signed by his Agent and
filed by his Agent. Also for the same reason it need not be verified
by anyone. (See Section 76 of the Act 1911 and Rule 9 of the 1911
Rules.) All that is required is for the opponent previously to have
given his signed authorisation to suoh Agent to act on his behalf.
Such authorisation is to be on Form No. 31. 31 This form will require
a stamp as a Power of Attorney either of Rs. 2 or of Rs. 10 : the
lesser stamp being enough if the authority is given for a single
transaction but the larger stamp being required where the authority
is given for more than one transaction or generally in respect of
several Patent applications. See the Indian Stamp Act (Act 11 of
1899) Art 48 as amended by the Bengal Stamp Amendment Act
(Bengal Act III of 1922) and later by the Indian Stamp (Bengal
Amendment) Act of 1935 (Bengal Act XII of 1935 Sec. 7(20)), which
came into force on 1st June 1935.
The Reply.
Rule 21(2), it is observed, is not mandatory. Thus there is no
necessity for the applicant to file any reply if he considers this
to be unnecessary. If he wishes to do so however it is required to
be in duplicate and to deal in full with the statement of the oppo-
nent. Thus it is advisable that it should contain both argument as
well as facts.
The time allowed for filing such reply will ordinarily be one
month from receipt by the applicant of the copy of the full state-
ment of opposition. In special cases however the Controller will fix
such time as appears to him to be reasonable. In a case in which
it will be necessary to obtain instructions from abroad it is advisable
for the applicant as soon as he receives the copy of the full state-
ment of opposition to write a letter to the Controller asking for
three months or whatever period is considered necessary in which to
file the reply. Similarly if reference is made in the Full Statement
to Books or Documents, copies of which are not readily available to
the applicant in India sufficient time will be wanted by him in which
ft 1
See Appendix No. 5 below.
430
THE LAW OF PATENTS IN INDIA
[Ch. X
to obtain the necessary copies first and then obtain instructions
concerning them after that. The reply may be filed and signed by
the Agent (in Calcutta) for the applicant. The applicant is in the
same position in this respect as the opponent is in regard to the
full statement of opposition. See rule 21(2) and see remarks above
under “Signing, agency, no verification necessary”.
The Rejoinder.
Rule 21(3) similarly is not mandatory.
If the opponent wishes to file a rejoinder this also is required
in duplicate. It is required to be confined only to matters in the
reply. It may be filed by the Agent (in Calcutta) and does not
require the opponent’s signature or any verification : see remarks
above.
Hearing date.
By Rule 22(1) it is provided as follows : —
“On completion of these proceedings or at such other time as
he may see fit, the Controller shall appoint a time for the hearing of
the case, and shall give the parties not loss than ten days’ notice of
such hearing.”
Applications for a special date to be fixed are ordinarily made
by letter addressed by the agent of the party to the Controller who
then notifies the agents of the parties of the date fixed by letter.
Evidence.
In England the practice is for all evidence which is to be
relied on by the parties at a hearing of proceedings in opposition
to grant to be given in the form of either written statements or
statutory declarations. Reference may be made to Rules 42 to 50
and 116 and 117 of the 1932 English Rules ; in particular Rules
Nos. 45, 46 & 47 and 116 & 117.
There are no rules relating to this in India. The present
practice is ordinarily for such evidence, as is required to be given at
the opposition proceedings before the Controller, to be given orally
by witnesses before him. A shorthand note is taken by a shorthand
writer supplied by the Patent Office. On request to the Controller
copies of the depositions of the witnesses can be obtained on pay-
ment of the necessary charges.
Ch. X]
EVIDENCE
431
By Section 65 of the Act of 1911 it is provided as follows : —
“Subject to any rules in this behalf, the Controller in any
proceedings before him under this Act shall have the
powers of a Civil Court for the purpose of receiving
evidence and administering oaths and enforcing the
attendance of witnesses and compelling the production
of documents and awarding costs/'
0
The Controller thus has power to issue sub-poenas for the
attendance of witnesses. It has been decided also by a decision of
the Calcutta High Court in Dorman Long & Co. v. Jagadish Chandra
Mahindra 82 that he is under a duty to issue such a sub-poena at the
request of a party in opposition proceedings ; and that his position
is the same as that of any Judge under the provisions of Order 16,
Rule 1 of the Code of Civil Procedure.
On the point whether or not the Controller has power to order
the issue of a commission to examine witnesses there has been a
ruling of H. E. the Governor-General, on his opinion on the point
being asked by the Controller in connection with another case, that
the Controller has no power to order the issue of a commission.
If expert evidence from outside India is therefore required by
a party on the hearing of opposition proceedings it is necessary for
the directions of the Controller to be obtained giving leave to the
parties to put in such evidence in the form of affidavits.
It may be noted that in addition to such other powers as the
Controller has in connection with the receiving of evidence, he has
a general power whereby he can require an applicant or agent to
submit a statement or make an explanation if required. This is
under Rule 65 of the Indian 1933 Rules the material portion of
which reads as follows : —
“Whether an applicant or agent desires to be heard or not,
the Controller may at any time require him to submit
a statement in writing within a time to be notified by
the Controller, or to attend before him and make expla-
nations with respect to such matters as the Controller
may require.”
This corresponds to Rule No. 114 of the English 1932 Rules.
(1934) 39. C.W.N. 573 at 579.
482
THE LAW OF PATENTS IN INDIA
[Ch.X
Belated oppositions.
Under Section 26(1) & (2) of the present English Patents &
Designs Acts 1907-1932 it is provided as follows : — •
“(1) Any person who would have been entitled to oppose
the grant of a patent or is the successor-in-interest
of a person who was so entitled may within twelve
months from the date of sealing the patent apply to
the Comptroller for an order revoking the patent on
any one or more of the grounds on which the grant
of a patent might have been opposed :
Provided that when an action for infringement or proceed-
ings for the revocation of the patent are pending in
any court, an application under this section shall not
be made except with the leave of the court.
(2) The Comptroller shall give notice of the application
to the patentee, and after hearing the parties, if
desirous of being heard, may make an order revoking
the patent or requiring the specification relating
thereto to be amended by disclaimer, correction or
explanation or dismissing the application ; but the
Comptroller shall not make an order revoking the
patent unless the circumstances are such as would
. have justified him in refusing to grant the patent had
the proceedings been proceedings in an opposition to
the grant of a patent”.
And by Section 26(4) it is provided as follows : —
“(4) Any decision of the Comptroller under this section
shall be subject to appeal to the Court.”
Such proceedings are commonly referred to in England as
"belated oppositions”, since as provided by Section 26(1) the grounds
on which such petition for revocation may be made are precisely
only those on which the grant might have been opposed if opposi-
tion had been effected before the Patent had been accepted ; that
is to say the grounds under Section 11 of the English Act. A
recent example of a belated opposition may be seen in the case
entitled In the Matter of the Petition of International Bitumen Emul-
sions Ltd. for the revocation of Dehn’s Patent reported in (1932)
Ch. X]
NO BELATED OPPOSITIONS
433
49. R.P.C. 468, where' the proceedings are referred to’ (at page 377)
under this description by Luxmoore J. in his judgment.
Statutory provision to the effect now embodied in the current
Section 26 of the English Act appears to have been first made in
England in the Act of (1907).
. . Even under the Act of 1907 in practice these proceedings only
differed from proceedings in opposition to grant in that an appeal
lay to the court instead of to the Law Officer. Now that under the
1932 Act appeal is to the Appeal Tribunal (that is a judge of the
High Court to be nominated by the Lord Chancellor) even from
proceedings in opposition to grant, there is not even this difference
for practical purposes.
There is no similar provision in the Indian Act for a belated
opposition of this nature before the Controller. Therefore in India
once a Patent has been accepted, objections to the validity of the
Patent can only be raised through a Petition for revocation under
Section 26 of the Indian Act made to a High Court.
Appeal.
In India an Appeal lies from the decision of the Controller in
proceedings iti opposition to grant only to the Governor-General in
Council : as is provided by Section 9(3).
Comment as to appeals.
In England until recently an appeal from the decision of the
Comptroller in opposition proceedings was to the Law Officer (under
the Act of 1907). The English Act of 1932, by Section 12 thereof
which added a new Section 92A to the principal act, set up an
Appeal Tribunal for Patent matters consisting of a Judge of the
High Court to be nominated by the Lord Chancellor ; and by the
Act of 1932 section 11 of the principal act was amended so that
appeals from the Comptroller in opposition proceedings were to lie
to that Appeal Tribunal.
The present arrangement in India under which an appeal from
a decision of the Controller is required to be disposed of by H. E.
the Governor-General in Council is not at all satisfactory : parti-
cularly in view of the fact that though the matter at stake may be
in value far greater than the value of a civil suit in which an Appeal
may lie to the Privy Council yet these appeals are to be disposed of
55
434
THE LAW OP PATENTS IN INDIA
[Ch.X
by an unjudioial body in an unjudicial manner ; for it appears to be
the practice .that any appeal which is filed to H. E. the Governor-
General in Council is, after being circulated round the appropriate
departments of Government, finally decided only on paper without
even the parties to the appoal or their advocates being heard on the
Appeal.
It may be anticipated that some more satisfactory provision
for the disposal of Appeals will be required to be made in India as
the volume of Patent work before the Controller and correspondingly
the volume of appeals from him increases.
CHAPTER XI
OBJECTIONS AFTER GRANT OF THE PATENT— REVOCA-
TION— COMPULSORY LICENSES— NO BELATED OPPOSI-
TIONS BEFORE THE CONTROLLER— APPLICATIONS
FOR REVOCATION BEFORE THE COURT
—APPLICATIONS FOR REVOCATION OR
COMPULSORY LICENSES BEFORE
H E. THE GOVERNOR-GENERAL
IN COUNCIL FOR ABUSE
OF MONOPOLY.
PART I
VARIOUS PROCEEDINGS FOR REVOCATION
Various proceedings possible : but no “belated oppositions” under
the Indian Act of 1911.
In the United Kingdom by virtue of Section 26 of the English
Patents & Designs Acts 1907-1932 it is open for “any person who
would have been entitled to oppose the grant of a patent” or who is
“the successor in interest of a person who was so entitled” to apply
to the Comptroller (not to the court) for revocation provided he
makes such application within twelve months from the date of the
sealing of the patent.
This matter has already been referred to in Chapter X. It is
only necessary here again to note that there is no provision in India
under the Indian Patents & Designs Act corresponding to this
English Section 26. And accordingly the position in India is that
all applications for revocation on grounds of invalidity are required
to be made to the court under Section 26 of the Indian Patents &
Designs Act 1911 • applications for revocation on the ground of
non-working or non-supply or on the ground of non-manufacture
in British India which are made under Sections 22 and 23 are
made to H. E. the Governor-General in Council * applications for
436 THE LAW OF PATENTS IN INDIA [Ch. XI
revocation by way of surrender only, under Section 24, are made to
the Controller.
It is proposed now to. consider in turn the various proceedings
which may be taken by way of an application for revocation : it will
be- necessary also here to consider -the' proceedings in which the
Petitioner may ask, instead or alternatively, for the grant of a com*
pulsory license.
PART II
PETITION TO THE HIGH COURT FOR REVOCATION
UNDER SECTION 26.
Who may apply for revocation to the High Court
By Section 26(2) it is provided as follows : —
“26(2) A petition for revocation of a patent may be presented —
(«) by the Advocate-General or any person authorized by
him ; or
(£) by any person alleging —
(i) that the patent was obtained in fraud of his rights,
or of the rights of any person under or through
whom he claims ; or
(ii) that he, or any person under or through whom he
claims was the true and first inventor of any
invention included in the claim of the patentee; or
(iii) that he, or any person under or through whom he
claims an interest in any trade, business or manu-
facture, had publicly manufactured, used or sold,
within British India, before the date of the
patent, anything claimed by the patentee as his
invention.”
The wording of this part of Section 26 is word for' word the
same as that of the English Section 25(4) of the English Patents &
Designs Acts 1907-1932. The principles which have been arrived
Ch. XI]
REVOCATION BY A HIGH COURT
437
at, therefore, in the English cases may be considered as applicable in
regard to the construction of this part of the Indian section.
It will be noted that the grounds mentioned in this Section
26(2) as sufficient to give a person the right to make an application
for revocation of a patent are different from the grounds mentioned
in the earlier part of the section as the grounds of objection upon
which revocation may be obtained when such interest or right to
make the application is established.
Status to present the Petition when the authority of the Advocate-
General has been obtained.
It is clear from the wording of the section, if the Advocate-
General’s authority has been obtained, the Petitioner may rely on
any of the grounds stated in Section 26(1) for the purpose of obtain-
ing the revocation of the patent in question.
Origin and object of the provision relating to the obtaining of the
authority of the Advocate-General.
Formerly revocation of an invalid Patent was obtained by scire
facias. If a subject sought to avail himself of the procedure by
scire facias , he had first to obtain the fiat of the Attorney-General
as in the case of an information with a relator. 1
Certain official regulations were issued for the purpose of
governing the relations between the relator and the Attorney-General
in a proceeding by way of such an information which are set out in
an A ppendix 2 to Robertson’s Proceedings by and against the Crown
at p. 835 and were worded as follows : —
“Regulations as to proceedings in the Chancery Division of the
High Court of Justice in the name of Her Majesty’s Attorney-
General at the instance of relators.
Note — These regulations will apply equally to such proceedings
in the King’s Bench Division.
1 As to scire facias see Robertson’s Proceedings by and against the Crown
(1308 edn.) Chapter X at p. 537. As to procedure in general on an information
with a relator see ibid at page 486 ; see also Annual Practice 1936 p. 2 ; also
Chitty's King’s Bench Forms (16th edn : 1931) p. 832 ; see also R. v. Eastern
Archipelago Co. (1853) 1. E. & B. 310, and Eastern Archipelago Go. v. R. (1853)
2 E. & B. 856, and, R. v. Eastern Archipelago Co. (1854) 4. D. M. & G. 199. As to
former procedure for revocation of a Patent for fraud see A. O. v. Vernon, Brown
db Boheme (1685) 1. Vern 277 and 370, and Robertson (ibid) at p. 471.
* See also Daniell’s Chancery Forms (6th edn. 1914).
438
THE LAW OF PATENTS IN INDIA
[Ch. XI
In the case of any application to Her Majesty’s Attorney-
General for his authority to commence in his name at the instance
of a relator an action in the High Court of Justice, Chancery Divi-
sion, the following regulations will be required to be observed, and,
so far as they are prospective, the authority of the Attorney-General
to use his name for the purpose of the proposed proceeding will
be given on condition that the same shall be observed.
It is required that the statement of claim and all amendments
thereof shall be signed by the Attorney-General.
The copy of the writ left with the Attorney-General for his
signature shall be accompanied by the proposed statement of claim
which the Attorney-General, if he shall allow the action, will also
sign and return to the relator’s solicitor to be delivered or filed as
provided by the Judicature Acts, 1873 and 1875.
There shall also be left with the Attorney-General a second
copy of the writ with a copy of the statement of claim appended
thereto, on which there shall be written a certificate of counsel to
the following effect : “I certify that this writ and statement of claim
are proper for the allowance of Her Majesty’s Attorney-General,
Dated &c.” This copy will be retained by the Attorney-General.
The papers shall be accompanied by a certificate of the solicitor
presenting the same for allowance that the proposed relator is a
proper person to be relator, and that he is competent to answer the
costs of the proposed action.
If any amendment of the statement of claim shall at any time
become necessary, the proposed amended statement of claim and a
copy thereof showing the proposed amendment shall be left with the
Attorney-General. On such copy shall be written a certificate of
counsel that the proposed amendment is proper for the allowance
of the Attorney-General. If the Attorney-General shall approve
the amendment, the amended statement of claim will be signed by
him and returned to the relator’s solicitor to be delivered or filed as
may be required. The copy so certified will be retained by the
A ttomey-Gcneral .”
Since the English Patents, Designs & Trade Marks Act of 1883
(Section 26(1) ) the remedy by scire facias to obtain revocation of
a Patent was abolished in the United Kingdom : and a procedure by
Ch. XI] STATUS TO PRESENT THE PETITION 430
way of Petition under that Statute was created in its place. Under
the Statute however equivalent rights to those which had previously
been available by scire facias were retained ; and in connection with
the exercise of those rights a procedure similar to that which had
been previously operative was also continued.
The scheme of the Indian Patents & Designs Act in regard to
the process made available under the Act for revocation of a Patent
is in its origin and nature similar to the scheme inaugurated in the
United Kingdom by the Act of 1883 and now operative in the United
Kingdom under the current English Patents and Designs Act 1907-
1932.
Under the scheme of the present Indian Act of 1911 it is open
to a person if he has a peculiar private interest in the Patent in
question, so as to be able to bring himself within the terms of any
one of the clauses of sub-section (b) of Sec. 26(2), to present a
Petition for revocation of a Patent without obtaining any hat,
authority or leave from the Advocate-General. This remedy was not
originally available to such an individual at Common Law : and has
been created directly under the Act and only by the Act.
Under the scheme of the present Indian Act of 1911, also,
there is a concurrent remedy open, under sub-section (a) of Sec. 26(1)
to any person to present a Petition for revocation of a Patent who
obtains the authority of the Advocate-General. In this respect the
Act is merely declaratory, in that it is merely continuing the right
which any member of the public always had at Common Law to
present a Petition for the revocation of a Patent on obtaining the
fiat of the Law Officer of the Crown under the former procedure
of scire facias-
It is thus due no doubt to the historical development of the
procedure under scire facias that the present procedure exists under
the present Act, whereby a person may in certain cases present a
Petition for revocation of a Patent, if he obtains the fiat of the
Advocate-General (under Sec. 26(2)(a)) but not otherwise.
While it is thus true that whereas originally, when the remedy
of scire facias was available, no person was entitled to institute
proceedings for the revocation of a Patent without first obtaining
440
THE LAW OF PATENTS IN INDIA
[Ch. XI
the fiat of the Attorney-General (or in India the Advocate-General),
and that since the present statutory remedy by Petition under the
Act has been substituted it has been made open to a person if he has
a peculiar degree of private interest in the Patent in question, to
institute the proceedings in his own right even without obtaining
any fiat, authority or leave from the Advocate-General ; yet at the
same time it is also noticeable, what is equally important, that the
old right of any person to institute the proceedings even when he has
no peculiar private interest in the Patent, provided ho first obtains
the authority of the Advocate-General, has been retained under the
present Indian Act as before. In the latter class of cases it is
submitted that the Petitioner must be taken to stand as a repre-
sentative of the public when instituting his Petition for Bevocation
just as a person in the position of a relator was under the old
procedure.
It is for these considerations that the obtaining of the autho-
rity of the Advocate-General is not to be regarded, it is submitted,
as any mere formality : but as the whole basis of the right of such
a Petitioner to present the Petition.
It is of interest to note how closely the present procedure
relating to the institution of a Petition for the revocation of a
Patent, when this is done with the leave of the Advocate-General,
approximates to the older procedure when the proceedings were
instituted on an information by a relator with the fiat of the Law
Officer of the Crown. One of the few points of difference is that
whereas under the former procedure the Petition was instituted in
the name of the Law Officer of the Crown on the relation of the
person moving for revocation, under the present procedure under
the present Patents and Designs Act the Petition is instituted in
the name of the Petitioner himself, and the name of the Law
Officer of the Crown only appears on the Petition by way of an
endorsement with his signature, showing that it has been filed with
his authority.
Otherwise in essentials the same practice is adopted for the
purpose of obtaining the authority of the Law Officer of the
Crown and the same principles are applicable as to the exercise of
his discretion in granting suoh authority as under the older
procedure.
Ch. XI] WITH THE AUTHORITY OF THE ADVOCATE-GENERAL 441
Procedure on the application to the Advocate-General for his
authority.
The practice now followed in British India is in all respects
the same as that followed, in the United Kingdom. The person, who
desires to file the Petition for Revocation in Court and for this pur-
pose desires first to obtain the fiat of the Advocate-General, makes
his application to the Advocate-General in writing in the form of a
memorial. Copies of the Specification of the Patent sought to be
revoked, and of the Petition sought to be filed in Court and of the
Particulars of Objections forming the grounds of the Petition, also
of any documents or other specifications relied on in the Petition or
in the Particulars of Objections are forwarded as Anncxures with
the Memorial . 3
With this memorial the applicant to the Advocate-General
also forwards : —
(i) a declaration by the Applicant (a) verifying the state-
ments in the memorial : and (b) declaring that the questions
proposed to be raised in the Petition for Revocation and in the
Particulars of Objections upon which the revocation of the Patent is
sought are not and cannot be raised in any legal proceedings pending
in British India at the date of the Application for the fiat.
(ii) also a certificate signed by Counsel to the effect that in his
opinion the Petition for Revocation is “proper for the allowance
of the Advocate-General” :
(iii) also a certificate by a Solicitor that the applicant is a
proper person (or corporate body) to be the Petitioner, and that the
applicant is competent to answer the costs of the proposed Petition
for Revocation . 4
* Cf Edmunds (1890) p. 361 ; Frost (4th edn. 1912) Vol. I, p. 293 ; Fletcher
Moulton (1913) p. 211 ; Terrell (8th edn. 1934) p. 349.
4 For cases relating to the exercise of his discretion by the Law Officer
(who in India will be the Advocate-General) reference may be made to Edmunds
(1890 edn.) page 362 ; Frost (4th edn. 1912) p. 294. Cf. London G. C, v. A. U .
1902 A. 0. 165.
For a form of Petition for Revocation see Frost (4th edn. 1912) Vol. II.
p. 480-482 s Terrell (8th edn.) p. 611.
For a form of Memorial to the Advocate-General praying for his authority
to present the Petition see Frost (4th edn. 1912) Vol. II, p. 482 . Terrell (8th
edn.) p. 612. \ Continued on next page ]
56
442
THE LAW OF PATENTS IN INDIA
[Ch. XI
The practice appears to be based on the general practice
which is resorted to in cases where an individual as relator seeks to
institute an action on behalf of the Crown or of those who enjoy
the Crown’s prerogative.
Procedure relating to notice of the application made to the
Advocate-General.
The practice in the United Kingdom appears to be that notice is
given to the Patentee (by the Secretary to the Law Officers’ Depart-
ment) of the fact of the application for the Gat having been made to
the Attorney-General. 6 On application to the Attorney-General by
the Patentee a copy is also sent of the draft Particulars of Objec-
tions which are intended to be relied on by the other party as the
foundation for the Petition for Revocation. One result of this
procedure is that the Patentee then has the beneGt of having notice
of the alleged objections which the other party intends to raise
against the validity of his Patent at an early stage and even before
any Petition is actually filed. He therefore has thus an opportunity,
if he so desires, of taking steps for amending his SpeciGcation in
proceedings for amendment before the Comptroller before any Peti-
tion for revocation is filed in Court. See In the Matter of the
Patent of the Western Electric Co. Ltd. In that case it was held
that not only was there no objection to the Patentee making such an
application if he so desired before the Comptroller for the amend-
For the form of authority which is endorsed on the Petition by the
Advocate-General see Frost (4th edn.) 1912, Vol. II, p. 482.
For a form of certificate by Counsel see Robertson p. 543. Daniels Chancery
Forms (6th edn. 1914) p. 29 ; Chilly’s King’s Bench Forms (16th edn. 1931) p. 832.
For a form of certificate by the Solicitor see Terrel (8th edn.) p. 613.
Compare Robertson p. 543 j Chilty's King’s Bench Forms p. 833.
For a form of the Statutory Declaration required from the Applicant see
Terrell (8th edn.) p. 613 also 349.
Generally see the commentary on Order 1, Buie 2 of the (English) Buies of
the Supreme Court (Annual Practice 1936) ; also Robertson’s Civil Proceedings by
and against the Crown p. 486 & 543 : also Daniels Chancery Forms (6th edn.)
p. 29 ; also Chitty's King’s Bench Forms p. 832. For further comments on what
should be stated in the memorial see Terrell (8th edn.) p. 349.
* See In the Matter of the Patent of the Western Electric Co. Ltd. (1933)
50 B. P. C. 59.
Ch. XI]
OBTAINING THE AUTHORITY
443
ment of his Specification so as to cure, if he could, its defects, but
that it was desirable for the Court to adjourn the hearing of the
Petition for Revocation if necessary when it came on for hearing, so
as to allow time for the application for amendment of the specifica-
tion to be first disposed of.
It would appear that an Advocate-General of a High Court in
India will adopt a similar course of procedure to that which has
become customary with the Attorney-General in the United Kingdom
and will accordingly give notice to a Patentee when an application
for his authority is made by any person preliminary to the present-
ing of a Petition for revocation. On receipt of such notice a
Patentee in British India prior to the filing in Court by the opposite
party of the Petition for revocation, will then, it is submitted, be
entitled to make an application for amendment of his specification if
he so desires, before the Controller of Patents. For there will at
that time be no “proceeding before a Court for the revocation of a
Patent” which is .“pending” such as to attract the provisions of
Section 17 (9) of the Indian Act.
Provided the Patentee undertakes to proceed with due diligence
to obtain the disposal of the application for amendment, it may be
that a Court in India may direct the Petition for revocation to stand
over pending the decision by the Controller of the application for
amendment : as was done in the case of the Western Electric Co.
Ltd. Patent (cited above).
Effect of obtaining the authority of the Advocate-General.
A person who has obtained the fiat of the Advocate-General
will be considered to be making a Petition for revocation as one of
the public and not as an individual. See Shoe Machinery Co. Ltd. v.
Cutlan , 6 It was pointed out in that case that it bad been on this
reasoning that in the case of Deeley’s Patent 7 it had been held that
a certain judgment which had been previously given in a matter in
which the same person had been a litigant as an individual, was no
estoppel against him as a Petitioner with a fiat in a petition for
revocation.
• (1895) 12 R.P.0. 530 (C. A.) at p. 533.
' (1895) 12 R. P. G. 192 at p. 199 : see also Jameson’s Patent (1902) 19 R.P.O.
246 at p. 248 and at p. 252.
444 THE LAW OF PATENTS IN INDIA [Ch. XI
The authority of the Advocate-General is not obtained as of course.
The Petitioner does not obtain the authority of the Advocate-
General as of right 5 for the Advocate-General has a discretion to
grant or refuse it. And as it was put in one case referring to the
similar position of the Attorney-General in the United Kingdom,
“he has a most important duty to perform.” In that case the Master
of the Rolls in considering the granting of the fiat a writ of scire
facias for revocation of a Patent observed as follows : —
“It has been said that the writ issues as of course, the fiat of
the Attorney-General for issuing it being granted as of course I
think this ought not to be the case ! and I should hope there is some
error or exaggeration in the notion upon that subject which seems to
prevail, as it appears to me that the Attorney-General, when applied
to for his fiat (without which the writ cannot issue), has an important
duty to perform.”®
In the same case it was also held that there was no reason why
the Law Officer should not grant his fiat to an alien. Also that it
was beneficial in certain circumstances that the Law Officer should
take security for costs from the Applicant as a condition for grant-
ing his fiat.
Moreover though the Law Officer of tho Crown will doubtless
not be disposed, by a refusal of his fiat, to shut out a Petitioner from
moving a Petition for revocation of a Patent in ordinary circums-
tances, yet it would appear from the reported English cases, that it
has been his settled practice not to grant the fiat where the points in
issue regarding the invalidity of the Patent could be decided in other
litigation with reasonable convenience.
That it is a condition precedent, to an applicant’s right to
apply for the fiat, that it is not possible for the issues raised by him
as to the invalidity of the Patent to be decided in other li tiga tion
then pending would seem to follow from the terms of the declaration
which he has to file with his application for the fiat.
But the authority of the Advocate-General is not ordinarily
refused.
In the absence of reasons to the contrary, where the Peti-
* See the Queen v. Prosser (1849) 18. L. J. Ch. 35 ; compare also Fletcher
Moulton p. 211 ; Edmunds p. 361 ; Frost (4th edn.) p. 293.
Ch. XI] ADVISABLE ALWAYS TO OBTAIN THE FIAT
445
tioner makes out a prima facie case, the authority will ordinarily
not be refused.
In the case of Shoe Machinery Co. Lid. v. Cutlan it was
observed by Smith L. J. that “where there was anything like a
prima fade case made out entitling the person to bring the action
that he wanted to bring, and it was necessary to obtain the fiat of
the Attorney-General, there was no Attorney-General, of late years
at any rate, who has existed or who would exist hereafter, who
would refuse his fiat” And it was in that case also observed that
this principle was so well recognised, that in another case where
the point had come up, it was said that a man might in certain cir-
cumstances be held to have a right at law to bring an action,
although he was in a position of having to get the fiat of the
Attorney-General before he could do so. 9
Reasons why it may be advisable to obtain the authority of the
Advocate-General in every case.
The question has arisen in England in cases where no such
authority has been obtained whether a person who has acquired a
right to make the application by reason of his interest only on
one of the grounds mentioned in Section 26(2)(b), will thereafter be
entitled, in asking for the Patent to be revoked, to pursue all other
grounds which are mentioned among the grounds on which a patent
can be revoked.
There appears to be some authority for the proposition that
when once a Petitioner has a locus standi to present the Petition he
can impeach the Patent on any lawful ground he chooses. 10
Nevertheless this is not free from doubt.
In order, therefore, that the Petitioner may be certain of being
free to pursue all grounds for revocation stated in Section 26(1), it
may be advisable for him to obtain the authority of the Advocate-
General under Section 26(2)(a), even in a case where he might have
sufficient interest to 61c a Petition without such authority under
Section 26(2 )(b).
• See ibid at p. 533.
10 See Edmunds p. 366 ; Frost (4th edn. 1912) at page 292 and Morgan's
Patent (1887) 5 P.O.R. 186 or (1888) 5. R.P.C. 186. See also Muller's Patent
(1907) 24. R.P.C. 465 ; and Traction Corporation Ltd. v. Bennett (1008) 25.
R.P.C. 819 at p. 822.
446
THE LAW OF PATENTS IN INDIA
[Ch. XI
It will therefore be prudent for a Prospective petitioner for
revocation in every case to obtain the authority of the Advocate-
General. This becomes especially advisable if it is desired to
rely for revocation on a ground or grounds on which the Petitioner
cannot rely for the purpose of giving him his status to present the
Petition.
To avoid all difficulty it is advisable that the authority of
the Advocate-General should be obtained before tho Petition for
revocation is filed.
Whether the authority of the Advocate-General can be obtained
nunc pro tunc.
As to what is the position in law if a Petition is filed and
partly heard before the authority of the Advocate-General is obtain-
ed, and then it is desired to obtain the authority nunc pro tunc,
appears to be a matter of some doubt. From certain of the earlier
cases it would appear that a course had on several English occasions
been adopted of allowing the case to stand over in order to allow
the party claiming revocation of the Patent to obtain the fiat of tho
Attorney-General in the interval . 11
In certain cases in order to save any objections that the Peti-
tion (or counterclaim) for revocation had been presented prior to
the date when the fiat had been v obtained and was therefore bad, the
case appears to have been treated as being allowed to proceed on a
basis that the Attorney-General’s fiat though granted in fact at a
date after the filing of the Petition was to have effect as having
been filed at a date earlier than the filing of the Petition, that is to
say as if when granted it had been antedated ; or as it has been put
in the judgments, as if it had been granted “ nunc pro tunc . 12
But in the subsequent case British Thomson Houston Coy.
Lid. v. British Insulated <& Helsby Cables Ltd . 13 the Court of Appeal
in the United Kingdom have pronounced judgments from which it
11 See Dege's Patent (1895) 12. B. P. C. 448; Jameson's Patent (1902) 19.
B. P. 0. 246.
*• See Dege's Patent (1895) 12. B.P.C. 448 ; Jameson’s Patent (1902) 19 B.P.C.
246 ; Cf. Frost’s Patent Law and Practice (4th edn. 1912) Vol. I at p. 294 ; Terrell
(8th edn.) p. 348.
•» (1924) 41. B.P.G. 345.
Ch. XI] FIAT NOT OBTAINABLE NUNC PRO TUNC 447
would appear that if the point came before the Courts again it
would be held that the Attorney-General’s hat could not be ante-
dated in the manner previously suggested in view of the previous'
cases.
The following observations contained in the judgment of Atkin
L. J. in British Thomson Houston Coy. Ltd 1 *, v. British Insulated &
Helsby Cables Ltd. are of considerable interest on this point : he
said : —
“It is plain that when this Counterclaim was delivered the
Defendants were not authorised by the Attorney-General, and
they did not obtain that authorisation until after an application
had been made to the Court. Later on, in pursuance of an Order
made by the Judge, an application was made to the Attorney-General
for his authorisation, which he granted at a particular date.
With great respect, I think it extremely unlikely that the Attorney-
General himself, if he were asked to give such authorisation,
would be the least likely to date his authorisation at any other date
than that on which he in fact granted it. In fact, I myself have
very considerable doubt as to the powers of the Attorney-
General, whether he has any power to grant an authorisation and
date it at some different date from that at which he does in fact
grant it. To date an authorisation nunc pro tunc is something
very different from the power given to the Court now authorised
by the rules, of dating an Order nunc pro tunc in pursuance of a
decision which must have been made at some earlier time. In
any case I am quite satisfied that, if the Attorney-General has not
in fact himself dated his authorisation nunc pro tunc , the Court
has not power of its own motion to direct that authorisation shall
be taken as having been granted at some other date than it was
granted.
To my mind, the cases which have proceeded upon that autho-
risation, granted after the Counterclaim has been in fact delivered,
have probably been misunderstood. I think that what has, in fact,
been done is this, that the Counterclaim has been treated as being
delivered tunc pro nunc , which is quite a different proposition, and
14 Ibid at p. 415.
448
THE LAW OF PATENTS IN INDIA
[Ch. XI
that the true view of the matter is that, inasmuch as one may deliver
a Counterclaim up to the time, and during the time, of the action, if
the Court so approves, it may allow the defendant to obtain the fiat
and then deliver his Counterclaim. I very much doubt whether it is
necessary to state in a Counterclaim that authorisation has been
obtained. In other proceedings that one is familiar with, criminal
proceedings, and so on, it is not usual, in the actual document, the
indictment or elsewhere, to record that the proceeding is by leave of
the Attorney-General or the Director of Prosecutions, as the case
may be. However, that is another matter ; and it may very well
happen that, by order of the Court or by consent of the authorities,
the parties may agree that the Counterclaim shall not in fact be re-
delivered, but shall be taken to be re delivered if the parties are in a
position to re-deliver. I think that is what took place in this case ;
therefore it appears that the Defendants must be taken to have
specially delivered the Counterclaim at a time when they were autho-
rised by the fiat of the Attorney-General. Therefore, the Counter-
claim is in order, and it will follow that the Patent having been
declared iu the action to "be void, the Order for revocation can pro-
perly be made.”
In that case the Petition was entertained and revocation grant-
ed solely in view of the special directions which had been previously
given by the Court of first instance, the force of which was taken to
be that the Petition was to be treated as being re-delivered after the
fiat had been obtained. If it had not been for such special direc-
tions of the Court, the judgments of the Court of Appeal appear to
indicate clearly that the Petition would have been dismissed for the
reason that the fiat had not been obtained previously to the date of
the filing of the Petition ; and for the reason that the Appeal Court
was clearly of the view that it was not within the power of the
Attorney-General to ante-date his fiat in any way so as to make it
effective from any date earlier than that on which it had been
given . 15
14 See Deye’s Patent (1895) 12. R. P, C. 448; Jameson's Patent (1902)
19. R. P. C. 246 ; Max Muller's Patent (1907) 24. R. P. C. 465 ; British Thomson
Houston Coy. Ltd. v. British Insulated and Helshy Cables Ltd. (1924) 41. R. P. 0.
845 ; Cincinnati Qrinders (Inc) v. B. S. A. Tools Ltd. (1931) 48. R. P. C. 33 ;
Western Electric Coy. Ltd.’s Patent (1933) 50. R. P. C. 59.
Ch. XI]
WITHOUT THE AUTHORITY
449
Status to present the Petition when the authority of the Advocate-
General has not been obtained.
It is clear, as already indicated, that a person will have the
necessary status to present the Petition in his own right even with-
out obtaining any authority of the Advocate-General, if he can bring
himself within the terms of sub-section (b) of Sec. 26(2).
“Any person alleging”.
A question arises whether in order to establish his status
in his own right to present a Petition under Sec. 26(2Xb) the
Petitioner must prove the facts which give him the status or
whether mere allegation in his Petition is enough of itself to give
him the requisite status.
In regard to the proper construction of this phrase where it
occurs in the corresponding wording of the English Act, it has been
suggested that a mere unfounded allegation will not be sufficient to
give a Petitioner the requisite status to move a Petition for Revo-
cation. 14 But on the wording of the Section it would seem doubtful,
in a case where the requisite allegations are contained in the Peti-
tion, whether anything more can be insisted upon by way of a
condition precedent to the Petitioner's having a right to be heard by
the Court. In any event where there is no reason to suppose that the
Petitioner’s allegations contained in the Petition are not bonafide , it
would seem that on the wording of the Section (Section 26(2)(b) of
the Indian Act) the making of the allegations in the Petition, without
more, will be sufficient to give the Petitioner the right to be heard. 17
Grounds for status under sub-section (i).
“Obtained in fraud of his rights or of the rights of any person
under or through whom he claims.
As to the nature of the facts which the Petitioner, for the
purpose of acquiring the requisite status to present to the Petition,
will have to establish, in order to show that the Patent was obtained
in fraud of his rights, reference may be made to Chapter VII, p. 258
where this matter has already been discussed.
“Any person under or through whom he claims.”
As to the phrase “any person under or through whom he claims”,
* • See Terrell (8th edn.) p. 346.
lf See Froat (4th edn.) p. 292 note (r).
57
450
THE LAW OF PATENTS IN INDIA
[Ch. XI
it would seem that this phrase is used to enable the person, in whose
name the Petition is brought, to rely on fraud perpetrated against a
predecessor in title. Since the fraud is limited to a class of fraud
perpetrated at the time the Patent was obtained and in connection
with the act of obtaining it, it would seem to follow that the person
intended to be referred to in the section as having been defrauded can
only be the true and first inventor : for there will be no other person
who would be in a position to be affected by the fraud indicated.
Therefore it would also seem to follow that a Petitioner, for the
purpose of acquiring a status to move a Petition, can only rely
on this ground in circumstances where he is a successor in interest
or in title, in respect of some right or other, of the real true and first
inventor. This may be so in a case where he is a successor or trans-
feree in respect of the right to make application for the Patent. It is
difficult to envisage any other right of which the Petitioner can be a
successor or transferee from the true and first inventor so as to say
that he is claiming “under or through” him unless the sub-section is
meant to cover all such persons as those who are merely successors
in business of the person who was the true and first inventor. In
any case it may be a question of mixed law and fact depending on
the individual facts of the case whether, even if fraud can be shown,
the Petitioner can be said to be a person claiming “under” or
“through” the iierson who was the real true and first inventor.
In sub-section (iii) of Section 26(2)(b), as is not the case in sub-
sections (i) and (ii), the nature of what it is that the Petitioner is to
be in the position of claiming — “under” or “through” the other
person referred to in the sections — is specifically mentioned : that is
to say “an interest in any trade business or manufacture.”
Grounds for status under sub-section (ii).
As to the nature of the facts which the Petitioner, for the
purpose of acquiring the requisite status to present the Petition, will
have to establish in order to show that he was the true and first
inventor, reference may be made to Chapter VII, p. 248 where this
matter has already been discussed.
Grounds for status under sub-section (iii).
The facts involved in this sub-section amount in effect to
Ch. XI] GROUNDS FOR REVOCATION 451
showing prior user by the Petitioner : as to which reference may be
made to Chapter VI, p. 174.
Grounds on which revocation may be claimed on Petition to Court.
The grounds which, if any one or more of them be established,
will entitle the Petitioner to have an order revoking the Patent are
set out in Sec. 26(1) and are as follows : —
“26. (1) Revocation of a patent in whole or in part may be
obtained on petition to a High Court on all or any of the following
grounds, namely : —
(a) that any invention included in the statement of claim
is of no utility ;
( b ) that any invention included in the statement of claim
was not, at the date of the application for a (latent,
a new invention within the meaning of this Act ;
(c) that the applicant was not the true and first inventor
thereof or the assign or legal representative of such
inventor thereof ;
(d) that the original or any amended application or speci-
fication docs not fulfil the requirements of this Act ;
(e) that the applicant has knowingly or fraudulently inclu-
ded in the application for a patent or in the original or
any amended specification, as his invention, something
which was not new or whereof he was neither the inven-
tor nor the assign nor the legal representative of such
inventor ;
if) that the original or any subsequent application relating
to the invention, or the original or any amended speci-
fication, contains a wilful or fraudulent mis-statement ;
(g) that the whole or a part of the invention or the manner
in which the whole or a part is to be made and used as
described in the original or any amended specification,
is not thereby sufficiently described, and that this
insufficiency was fraudulent or is injurious to the
public.”
Since these grounds refer to matters which will result in the
invalidity of a Patent and such matters have already been fully
THE LAW OF PATENTS IN INDIA
[Ch. XI
452
discussed, reference may be made, for the facts which it will be
necessary for a Petitioner to prove in order to establish the various
grounds mentioned in the Section, generally to Chapters VI and VII.
Since these grounds mentioned in Sec. 26(1) are also the same grounds
on which a defendant in an infringement suit may rely by way of
defence to such suit, and since the meaning of the sub-clauses of
this section is further discussed in detail in connection with the
question of defence to an infringement suit, reference may also be
made to the subsequent Chapter relating to an infringement suit.
Practice and procedure regarding the Petition to the Court for
Revocation.
In most respects the practice and procedure which is to be
adopted in regard to the hearing in Court of a Petition for Revoca-
tion under Section 26 of the Indian Patents and Designs Acts will
be the same as the practice and procedure adopted in a suit for the
infringement of a Patent. For all such matters reference may there-
fore be made to a later Chapter 18 dealing with the practice and proce-
dure in an infringement suit. It is proposed to mention here only
certain points which arise in practice and are peculiar to the hearing
or disposal of a Petition for the Revocation of a Patent.
Security for costs.
Both the English Statute and the Indian Act are designed, with
the safeguards indicated, to make it essential that only persons who
have a certain degree of interest may move Petitions for revocation.
The Indian Section 26(3) contains also an additional safeguard in the
form of a provision of security for costs : for the purpose of protec-
ting patentees from the trouble and expense of litigation in defending
petitions with which they might otherwise be burdened in cases
which were not bona fide.
The Petition.
It will be advisable to state in the Petition itself that the
authority of the Advocate-General has been obtained (if this is the
case) and to mention the date on which it was obtained : that is to
say a date prior to the date of the filing of the Petition. Though it
is doubtful whether it is necessary that the Petition should contain
any express statement as to the authority having been obtained : see
*» Chapter XVII.
Ch. XI]
PROCEDURE
453
the observations of Atkin L. J. in British Thomson- Houston Co.
Ltd. v. British Insulated db Ilelsby Cables Ltd., already cited at page
446 above. On the other hand in cases where the authority has not
originally been obtained but an adjournment has been given to enable
the Petitioner to have time and obtain the authority and the authority
has then been obtained, it has been usual for directions to be given
that the Petition be amended so as to include an amendment that the
authority has been obtained. See Cincinnati Grinders (Inc.) v.
B. 8. A. Tools Ltd. 19 and In the matter of Jameson’s Patent. 29
Service of notice of the Petition.
This is regulated by Section 27 of the Indian Act : the provi-
sions of which are as follows : —
“27. (1) Notice of any petition for revocation of a patent
under Section 26 shall be served on all persons appear-
ing from the register to be proprietors of that patent or
to have shares or interests therein, and it shall not be
necessary to serve the notice on any other persons.”
Right to begin.
At the hearing of a Petition for Revocation of a Patent the
Respondent (i.e. the Patentee) will have the right to begin. 21
The Respondent will then, it seems, be entitled to call merely
formal evidence for the purpose of discharging the onus of establish-
ing in the first place that his Patent is valid and subsisting. There-
after the Petitioner will call his evidence whereby he will seek to show
the invalidity of the Patent and establish his case. After which the
Respondent will be entitled to call his evidence in rebuttal whereby
he will seek to refute the case for invalidity made by the petitioner. 22
The nature of the reliefs obtainable on a Petition for revocation.
The only relief obtainable on a Petition for revocation will be
an order for the revocation of the Patent in question : and an order
for the taxed costs of the hearing.
“ (1931) 4a R. P. C. 33 at p. 43. (Clauson J.).
40 (1902) 19. R. P. C. 246 at p. 251.
41 Bee (English) Rules of the Supreme Court Order 53A Rule 10. The same
procedure is followed in British India.
44 See Terrell (8th edn) p. 351 ; Fletcher Moulton p. 215.
454
THE LAW OF PATENTS IN INDIA
[Ch. XI
The Court will have power to include in its order as to costs
an order regarding payment of any costs which may have been
incurred in connection with the obtaining of the authority of the
A d vocate-General. 23
Not open in British India to a Defendant in an infringement suit
to counterclaim for revocation.
In the case of British Thomson-Houston Coy. Ltd. v. British
Insulated Helsby Cables Ltd. it was clearly pointed out by Atkin L. J.
that in the United Kingdom the right which a Defendant had in an
infringement suit to counter-claim for revocation was purely statu-
tory and was a right which was created solely by Section 32 of the
English Patents and Designs Act. This Section 32 is to the follow-
ing effect : —
"32. A defendant in an action for infringement of a
patent, may without presenting a petition, apply in accord-
ance with the rules of the Supreme Court by way of counter-
claim in the action for the revocation of the patent”.
The observations of Atkin L. J. were as follows : —
“It appears to me that the power to counterclaim for re-
vocation is purely statutory, and depends upon Section 32. A
defendant, if entitled to present a petition to the Court for the revo-
cation of a patent, may, without presenting such a petition, apply
in accordance with the rules of the Supreme Court by way of
counterclaim in the action for the revocation of the patent ; and the
person entitled to present the petition for revocation is, in this case,
a person authorised by the Attorney-General. It seems to me that
a person may not, therefore, deliver a counterclaim for revocation,
unless he was, at the time he delivered his counterclaim, authorised
by the Attorney-General to present the petition”.
There is no section in the Indian Act of 1911 corresponding
in its terms to Section 32 of the English Act.
It is clear therefore, that it is not open to a Defendant in an
infringement suit in British India to claim, in the suit, revocation of
the Plaintiff's Patent.
If the Defendant pleads by way of defence that the Plaintiff’s
Patent is invalid and if the Court upholds the Defendant’s objec-
a ” See (1924) 41. R. P. 0. 845 at p. 415.
Ch. XI] REVOCATION BY H. E. THE GOVERNOR-GENERAL 455
tions, the Court may, in the infringement suit, declare the Patent
invalid. It will thereafter be open to the Defendant if he desires to
obtain the revocation of the Patent to file a Petition for revocation.
In such Petition, as a ground in support of the Petition it appears
to be open to the Petitioner to plead that the Patent has on a pre-
vious date already been declared invalid, mentioning the infringe-
ment suit.* 4
Appeal.
In England appeals from petitions for revocation lie to the
Court of Appeal and House of Lords as in ordinary civil actions. 25
In India it is submitted, appeals will on similar principles be
governed by the Code of Civil Procedure in precisely the same
manner as appeals from other civil litigation in the High Court on
its original side.
PART III
PETITION TO H. E. THE GOVERNOR-GENERAL IN COUN-
CIL FOR REVOCATION OR FOR COMPULSORY
LICENSE UNDER SECTIONS 22 & 23.
Construction of the Act as affecting practice and procedure there-
under.
A detailed comparison has already been drawn between the
provisions relating to non-supply and non-working and non-manu-
facture under the current Indian Act and the English Act of 1907.*®
For the reasons there discussed it is submitted that the decisions in
English cases relating to questions of practice and procedure arising
on a construction of the English Act of 1907 are equally applicable
regarding similar questions arising under the Indian Act of 1911.
'** gee, for example, the draft form of memorial for revocation set out in
Terrell (8th edn.) at page 612 which appears to be framed to meet such a situa-
tion.
** See Terrell (8th edn.) p. 354.
4 * See Chapter VIII above.
456 THE LAW OF PATENTS IN INDIA [Ch. XI
As to who may apply tor revocation to the Governor-General in
Council.
The words used in Section 22 are “any person interested” : in
Section 23 the words are “any person’'. In view of this difference
in wording it is clear, it is submitted, that it is open to any person,
even a common informer, to make an application under Section 23.
It is not necessary for the Petitioner to show any degree of personal
interest in the patent attacked before being entitled to be heard.
There has been in the English cases direct judicial authority
that this in the correct construction of the words : since this very
point was discussed at length by Mr. Justice Parker (as he then was)
in the case of the Application for the revocation of Hatschek's
Patents : and the possible evil effects of the section were criticised
and certain suggestions were made as to how the Comptroller in
England might prevent these evils. 27
It was expressly held in considering the same wording of the
English Section 2? of the English Act of 1907 that any person
whether having any real interest in the development of British
Industries or not, whether a foreigner or a British subject and
whatever be his motive even if he was a mere common informer,
might apply : and oven that there was nothing to prevent him making
repeated applications from time to time as he pleased. 28
In fact it was to give reasonable protection to patentees that
the learned Judge proceeded to show how under the Rules, it might
be in certain cases open and advisable for the Comptroller to insist
on the Applicant’s making out a prima fade case before calling on
the Patentee even to file any reply. How far it is necessary for the
Applicant to prove his case independently and how far he may rely
on compelling the Patentee to disclose the desired facts will be
hereafter further considered : in doing so certain passages of the
judgment of Mr. Justice Parker may be cited which will also be
found to treat of the point already referred to (that anyone may
make the application).
As to applications under Section 22 it is submitted that a
similar degree of interest will be required to be shown by the
9 » See (1909) 26. K.P.C. 228 at p. 245 and 246.
*• See 26. B.P.C. at p. 239 and 246.
Ch. XI]
PROCEDURE
457
Applicant as is required by an Opponent in proceedings in opposi-
tion to the grant of a patent.
In such cases it is submitted it will be in the discretion of
H. E. the Governor-General in Council in every case to direct
whether the question, whether the applicant has or has not the
requisite degree of interest, be heard as a preliminary point or not.
For the protection of the patentee it is suggested that it might be
in the public interest for the matter to be decided in most cases as
a preliminary point in these proceedings : even though in Opposi-
tion Proceedings (before the Controller) the tendency is for an
issue as to interest not to be decided as a preliminary point. 29
Comments
At the present day it would appear entirely unnecessary to
have Sections 22 and 23 as separate sections. It seems also both
pointless and inexpedient that this difference as to who may make
an application should continue to exist in regard to the two sec-
tions. In England the effect of the two sections was combined as
long ago as 1919. And in England it has been made necessary for
any person who desires to make an application for revocation or
compulsory licenses to show that he has some personal interest in
the matter The Indian Act should be amended on the same lines.
Grounds on which revocation (or compulsory license) may be claim-
ed on Petition to H. E. the Governor-General in Council.
Regarding the nature of the grounds which a Petitioner when
putting forward a case of abuse of monopoly for reasons of non-
supply or non-manufacture must establish in order to succeed under
Section 22 or Section 23 on an application for revocation or for the
grant of a compulsory licence, reference may be made to Chapter
VIII (above) where this matter has already been considered in
detail.
Procedure : Rules.
It appears that no Rules of any sort have been made under
the Indian Patents & Designs Act concerning the procedure to be
90 See Chap. X above.
8 0 See Section 27 of the current English Act in Appendix No. 3 below, which
is the same for this purpose as Section 27 of the English Act of 1919 as original-
ly passed.
58
458 THE LAW OF PATENTS IN INDIA [Ch. XI
adopted for the adjudication of Petitions under Section 22 or Sec-
tion 23 by H. E. the Governor-General in Council.
How far the applicant may rely on discovery from the Patentee in
order to establish his grounds.
Since the issues raised on a Petition for revocation under
Section 22 or Section 23 may involve going into facts and figures
relating to the whole output of the Respondent’s business, it is evi-
dent that a Respondent may be very gravely prejudiced if he is
compelled to show to the Petitioner all his books and accounts with
all the figures showing his stocks, sales and methods of business
together with the names of all his customers in a case where in
truth it is found in the end that the Petitioner has no proper right
to claim Revocation at all. It is evident that these proceedings are
open to be abused by an unscrupulous trade rival, solely for the
purpose of obtaining inside information of his rival’s business, which
would not otherwise be available to him, or for the purpose of
pure harassment. It is because of the seriousness to the Respond-
ent of the disclosure that .he may have to make in order to defend
such a Petition, if it becomes necessary for him to defend it, that
questions of onus and questions of discovery in these Petitions
assume an unusually large degree of importance.
The whole question of where the onus lay in these applica-
tions and as to how in practice an applicant was to prove his case
came under discussion in an English reported case. The observa-
tions of the Comptroller-General in regard to the application made
under Section 27 of the English Act of 1907 are so much in point
that it will be convenient to set out an extract of his material
observations here : —
“This is a hearing of two Applications under Section 27 of the
Patents & Designs Act, 1907, and arises under the following circums-
tances. The Applicant has in each case filed the ordinary Form 24,
under Patents Rule 78, asking for revocation of Patents No. 7188 of
1902 and 13,556 of 1902, on the ground that the patented articles are
manufactured exclusively or mainly outside the United Kingdom.
The Patentees have been called on under Patents Rule 79 to leave
their declaration in answer. They reply (1) that on a proper cons-
truction of the Act read with the Rules, they ought not to be called
on to leave evidence until the Applicant has made out a prima facie
Ch. XI]
ONUS OF PROOF
469
case, or given evidence in support of his allegations ; (2) in the alter*
native that I have discretion to order such evidence to be left with
the Application, and that my discretion ought to be used in this case.
These are the points that I have to decide.
Mr. Gray and Mr. Hume appeared for the Patentees, and Mr.
Russell Clarke for the Applicant. It was admitted on both sides
that the question of the Rules being ultra vires could not be argued
before me having regard to Section 86, sub-sections (2) and (3) of the
Patents & Designs Act 1907, and the case of the Chartered Institute
of Patent Agents v. Loclcwood, reported in 11 R. P. C. page 374.
Mr. Gray and Mr. Hume therefore confined themselves to the
following arguments : — (1) Reading the Rules as part of the Statute
it is necessary, they said, to see if they conflict or arc inconsistent
with its other provisions, following the principle stated by Lord
Herschell at page 384 of Lockwood’s case, viz : — “No doubt there
might be some conflict between a Rule and a provision of the Act.
Well there is a conflict sometimes between two Sections to be found
in the same Act. You have to try and reconcile them as best you
may. If you cannot, you have to determine which is the leading
provision, and which the subordinate provision, and which must give
way to the other.” The Rules, it was argued, do conflict with Section,
inasmuch as by Sections 27(1) and (2) the onus is clearly thrown on
the Applicant to show that the patented article is manufactured
exclusively or mainly outside the United Kingdom, and the Rules
strictly read make no provision for the discharge of this onus. That
the onus is thrown on the Applicant is, it was said, implied in sub-sec-
tion (l) and is clear from sub-section (2). The Comptroller has to
“consider” the Application, and he cannot do so unless there is some-
thing more than the mere form to consider. The consideration of
the Application, according to this view, precedes the inquiry men-
tioned later, and there must be a preliminary hearing, if necessary,
at which the Applicant must make out his case under sub-section (1)
and so lay the foundation for the Comptroller’s jurisdiction, before
the other questions as to adequate working or the existence of satis-
factory reasons, are discussed. I have most carefully considered this
point, with the assistance of Mr. Russell Clarke’s argument for the
Applicant ; and I am of opinion that the Rules and the Section are
not inconsistent or conflicting. It seems to me dear from a const-
460
THE LAW OF PATENTS IN INDIA
[Ch. XI
deration of the other provisions of the Act, and the circumstances
under which Section 27 was introduced, that the Legislature deliber-
ately intended to relieve the Applicant from making out a prima
facie case or throwing upon him the necessity of proving — without
help from the Patentee — that the patented article is manufactured
exclusively or mainly outside the United Kingdom. If the Legisla-
ture desired to put this burden upon the Applicant it had only to
insert the words which are used in Sections 24(2) and (3). There the
Section (followed by the Rules) provides that a prima facie case
must be made out by the Applicant, and that it must be “proved” to
the satisfaction of the Court that the reasonable requirements of the
public with reference to the patented invention have not been satis-
fied. The rules shew that this must be done by declaration or affida-
vit, and the Board of Trade make a preliminary investigation to
decide whether a prima facie case has been made out by the Appli-
cant (see Patent Rules 68 to 74). No such provisions arc contained
in Section 27. A further argument is afforded by sub-section (5) of
Section 3 of the Patents Act, 1902. This sub-section which affords
an alternative ground upon which an Applicant may ask for a
compulsory licence or revocation reads as follows : — “If it is proved
to the satisfaction of the Judicial Committee that the Patent is
worked or that the patented article is manufactured exclusively or
mainly outside the United Kingdom, then, unless the Patentee can
show that the reasonable requirements of the public have been satis-
fied, the Petitioner shall be entitled either to an Order for a compul-
sory licence or, subject to the above proviso, to an Order for revoca-
tion of the Patent,” It seems clear from the wording of this sub-
section that the burden of proof would fall upon the Applicant. The
sub-section has not been retained among the amended provisions of
Section 24 of the Act of 1907 ; but it appears in a very different
shape in Section 26 sub-section (1). If Parliament had desired to
leave the onus on the Applicant the words “if it is proved &c.” could
have been retained in Section 27. It may be noted also that in
Section 27 itself the word “proved” is used where the onus is clearly
thrown on the Patentee, but there is no such expression in connec-
tion with anything that the Applicant is called upon to do.
Section 3 of the Act of 1902 was largely inoperative, owing it
has been stated to the heavy costs entailed by the proceedings and the
Ch. XI]
MALA FIDE APPLICATIONS
461
fact that the burden of proof was on the Applicant, and it may well
be that it was the deliberate intention of the Legislature to relieve
the Applicant of the burden of proof and make the Patentee disclose
at the earliest opportunity what he is really doing in this country
with the patent rights he has obtained, so as to assist the Court in
coming to a proper decision. I see no hardship or injustice in this,
on the assumption that the Legislature treats adequate working in
this country, when the main or exclusive working is abroad, as a
public duty attaching to the monopoly granted here ; and that to
secure the performance of this duty “any person” may give informa-
tion. The fact that Parliament deliberately substituted “any person”
for “any person interested” in this Section would seem to support
this contention.
I am of opinion therefore that upon a proper construction of
this Section the Applicant is not compelled to make out a pritna facie
case before the Patentee is called upon to leave evidence or make a
disclosure of what he relies upon in answer to the application.
What then i9 the result from these conclusions ? It does not
appear to me to follow of necessity that the full onus is therefore
cast upon the Patentee. I think it would be a reasonable construc-
tion of the Section that at the “consideration” and “inquiry” men-
tioned both Applicant and Patentee must do their best to assist the
Comptroller with evidence upon which he may come to a proper deci-
sion. The proceedings before the Comptroller have always proceed-
ed on wide and not unduly formal lines, and I think it most
important that this should be continued. If Section 27 has been
enacted to protect public interests it is reasonable that both parties
should do their best to assist and help in the inquiry and the Comp-
troller has wide powers under Rule 81 to call on any other person
who can assist him to give evidence. The Rules therefore in my
opinion might without inconsistency have provided that the
Applicant should give the best particulars he can of the allegations
he makes, even though there was no onus upon him to prove his
case. It is true they have not done that, and they are prima facie
therefore, open to the objection raised here that they place a Patentee
at the mercy of any one who dishonestly uses the process under
Section 27.
In my opinion, however, the answers to this objection, are (1)
462
THE LAW OF PATENTS IN INDIA
[Ch. XI
that the Patentee, as I hope to show later, can be protected against
mala fide applications ; (2) that in the majority of cases the giving of
particulars by the Applicant except to show bona fides would be use-
less, if the Patentee must also give full disclosure. The facts as to
working in this country are obviously within the knowledge of the
Patentee, and often within his knowledge alone. The Applicant
cannot prove a negative, and would in most cases find it absolutely
impossible to give any useful particulars without discovery from the
Patentee. The Rules therefore call on the Patentee, at once, to
disclose his case without waiting for any particulars from the
Applicant ; and if the Patentee can be protected against dishonest
and bogus applications, there is no unfairness in his being called
upon to do so ; if the reasoning above is sound.
It follows therefore that in my view the “consideration” and
the “inquiry” are part of the same process, and that the considera-
tion of the application takes place at the inquiry. There is only one
“inquiry” mentioned and this can neither be appropriated to a preli-
minary consideration of the Applicant’s case, nor confined to the
trial of the defences which the Patentee may raise. All the issues
it would seem have to be considered together, and this is not only a
convenient but a less costly process. There is no hardship or
injustice in trying at the same time alternative pleas. It is done
every day in the Law Courts, where alternative defences are raised
in the pleadings. In proper cases the inquiry may of course be
adjourned, to obtain further evidence, or allow new issues to be
raised, but in ordinary cases I see no necessity for this. If the
allegations in the application form are correct, the Patentee must
admit them and lose his Patent, unless he is prepared to prove
adequate working in this country (where the onus is clearly upon
him) or give satisfactory reasons for his inaction. If, on the other
hand, the allegations are incorrect, the Patentee must say so, and
then by Rule 79 state what he is actually doing in this country, as,
according to the reasons given above, it is his duty to assist the
consideration of the case in every possible way. If the facts as to
working in this country are thus given by the Patentee there is no
necessity that I can see for a double inquiry, as the facts which are
put forward to negative exclusive or main working abroad, would be
the same facts necessary to support a plea of adequate working in
Ch. XI]
PROTECTION OF PATENTEES
463
this country, if the Patentee is thrown back on this defence i and it
is for this reason apparently that the Rules only provide for one set
of particulars as to working in this country. The Patentee may of
course, if he choose, join issue solely oh the allegations in the appli-
cation, and fight out the case on that basis ; after leaving declara-
tions in accordance with the Rules as to the extent to which and the
place in which the patented article &c. is manufactured in this
country. If ho has a reasonable case but is unsuccessful at the
hearing, an adjournment might in proper cases be granted to enable
him to bring forward a proof of any “satisfactory reasons” upon
which he thinks he can rely to show why adequate working is not
carried on here. In conclusion, I think any other reading of the
Section than that given above would entail great expense and might
render the Section practically inoperative, if a too difficult or
impossible task were thrown on the Applicant.” 31
Similarly it was observed in Hatschek’s case by Mr. Justice
Parker as follows : — “The keynote of the Section (i.e. Section 27 of
the English Act of 1907) is, in my opinion, forfeiture for abuse of
the monopoly at the instance of even a common informer, the abuse
being in certain circumstances presumed unless disproved. 32
It is submitted that the above principles for the reasons
stated will be equally applicable in British India under the Indian
Act.
Procedure which may be adopted by H. E. the Governor-General in
Council to prevent abuse of the section and for the protection
of patentees.
As long as it is open under the current Act for any person,
even a common informer, to take proceedings under Section 23 it is
obvious that the Section is open to considerable abuse by unscrupu-
lous persons. The possibility and nature of such abuse were remark-
ed on in emphatic language in relation to the then existing English
Act and Rules in the judgment already referred to of Mr. Justice
Parker, of which the following extract will be of interest : —
“Lastly, I desire to make one or two observations on the
Patent Rules which govern the procedure before the Comptroller
11 See Applications for Revocation of lly tier's Patents (1909) 26. R. P. C.
198 at p. 200.
** See 26. R. P. C. at p. 240.
464
THE LAW OF PATENTS IN INDIA
[Ch. XI
under Section 27 of the Act. As those Rules at present stand, the
applicant applies for revocation, merely stating in the application
that the patented article is manufactured or the patented process is
worked exclusively or mainly abroad, and he need give no evidence
in support of his statement ; though the onus of satisfying the
Comptroller of the truth of these statements rests in the first
instance, in my opinion, at any rate, on him. The application is
served on the Patentee, who has thereupon within 14 days to declare
on oath whether the statement is or is not correct ; and if he says
the statement is incorrect, he must further declare on oath to what
extent and in what place the patented article or process is manu-
factured or carried on within the United Kingdom ; and, if such
extent is inadequate, the reasons for the inadequacy. The Applicant
has a certain time to file, but need not file, Statutory Declarations
in answer ; and then the matter comes before the Comptroller, there
being possibly up to this point no evidence that the case is within
the Section at all, for neither party is bound to give evidence of any
manufacture abroad. The question whether the Patent is or is not
to be revoked is disposed of at the same hearing, and I am told that
the patentee has to open his case and give his evidence before the
applicant gives any evidence at all. This procedure clearly, and in
my opinion, wrongly, puts the patentee on his defence before the
Comptroller has been satisfied by the applicant that the state of
affairs contemplated by sub-sectiirm 1 has arisen ; and such a proce-
dure, besides being in my opinion most unfair to the patentee, is
obviously open to very serious abuse. Even if the patented article
or process is not manufactured or carried on abroad at all, yet, if
anyone makes an application under this Section the unfortunate
patentee has to disclose, perhaps to some competitor or intending
competitor, particulars of his business which he may not desire to
disclose, and to give evidence in defence of his conduct before any
case raising a presumption against him has been made out. If, for
example, the Patent belongs to a firm like Messrs. Armstrong & Co.
and is for some improvement in some small part of the mechanism
of, say, a machine gun, anyone desiring to find out how many of such
machine guns were manufactured in this country might make the
necessary application for revocation ; and, without tendering any
evidence that the case was within the Section, force the patentee
to disclose on oath the extent to which the article protected by the
Ch. XI]
CRITICISM OF THE SECTION
465
Patent was manufactured in thi9 country. Having obtained that
information he might elect to withdraw the application. Inasmuch
as an application under the section can be made by any one, what-
ever may be his motive, and the Section in effect penalises patentees
who have abused their monopoly, it i9 in my opinion all the more
necessary, in order to prevent the Section being improperly used,
to insist that every applicant shall give at any rate prirna facie
evidence of the existence of the state of affairs contemplated by
sub-section 1, before the patentee is put to the trouble and expense
of finding out and proving the extent to which the patented process
or article is manufactured or carried on in this country or abroad,
and of explaining and justifying everything he had done since the
grant of his Patent. It must be remembered that not only can any
person apply under the Section, but he can apply from time to time
as he pleases. Failure on one application would be no bar to another
application a year later, and although the section was no doubt
passed in the interests of the public, still, if it be worth while retain-
ing any Patent system at all in this country, it ought, I think, to be
construed to give reasonable protection to patentees ; and for this
purpose tho applicant, who may be a mere common informer, ought
to be required to prove what even a common informer has to prove,
namely some case requiring an answer. In my opinion the proper
course for the Comptroller to pursue when he receives an applica-
tion under Section 27 is, to inquire whether the patentee admits that
the state of affairs contemplated by sub-section 1 has arisen. If this
is not admitted, he should inquire into the matter in the presence of
both parties ; and the applicant, being the person on whom the onus
lies, should be the first to tender evidence. It may well be that the
patentee knows nothing about what is being done abroad nor what
is being done in this country in the way of manufacturing the
patented article or carrying on the patented process. There is no
particular reason why he should know what is being done abroad
unless he has foreign Patents or is himself manufacturing the article
or carrying on the process abroad. Even as to the extent to which
the article or process is being manufactured or carried on here, he
may have no information ; for he may have sold licences outright,
and not confined the use to the revocation of royalties. I do not
say that he may not in the course of the inquiry be compelled to say
what he does know ; but at least the applicant ought at first to be
59
466
THE LAW OF PATENTS IN INDIA
[Ch. XI
called upon to make out some case requiring an answer and at any
rate until he has given some evidence that the case is within the
Section, I do not see what answer is required. If, on the other hand,
the patentee admits that the state of affairs contemplated in sub-
section 1 has arisen, or if after inquiry the Comptroller is satisfied
that it has arisen, the patentee may fairly be called on to state, first,
what his defence is, and then to prove it. It would be convenient
that, in stating what the defence is, the patentee should state the
reasons on which he intends to rely, if the extent to which the
patented article or process is manufactured or carried on is inade-
quate, and the particular facts on which he intends to rely, if he
contends that it is adequate.
I should like to point out that, even as the Patent Rules now
stand, it appears to me that the Comptroller can call upon the appli-
cant for evidence of the truth of the statement contained in the
application, enlarging the time for the patentee to put in his evi-
dence till this is done : and if the applicant does not furnish
evidence sufficient to call for an answer, may refuse to proceed
further with the matter. Similarly, he can, I think, enlarge the time
for filing evidence which can only be relevant for the patentee’s
defence, until he is satisfied that there is a case for calling on the
patentee to defend himself. But under these circumstances, it
appears to be desirable that the Rules should be altered. It must
be remembered that the Section is in its nature a penal section, that
the patentee is on his trial, that mere accusation raises no presump-
tion of guilt and that the Comptroller is a Court exercising judicial
functions. It is not merely the case of a departmental inquiry.
The Comptroller is in the position of a judge, and not of a Commis-
sioner employed to take evidence and with power to summon before
him and examine any person he pleases. The procedure therefore
I think should be clearly specified in the Rules, and should be a
procedure adapted to the circumstances having regard to the onus
which the Act throws on the applicant and the patentee respec-
tively.”
Since the date of that judgment the English Act and the
English Rules have been considerably revised. The position remains
however, it seems, in India the same as that which was thus adversely
criticised by Mr. Justice Parker : only, possibly, rather worse, since
there appear to be no Rules of any sort in force in British India
Ch. XI]
DISCRETION
467
governing the hearing of a Petition under Section 22 or Section 23.
As long as the Indian Act and Rules remain unamended, all that can
be done for the protection of patentees against vexatious proceedings
under this part of the Act is it seems that perhaps H. E. the
Governor-General acting under his general inherent powers may be
vigilant to prevent Patentees being compelled to put in a reply or make
auy embarrassing statements concerning their own business unless the
Petitioner first established a bona fide prima facie case. The present
provisions of the Act as contained in Sections 22 & 23 are however
highly unsatisfactory and incomplete. Luckily it would appear that
the full effect of Section 23 has not as yet been fully appreciated by
any of that unscrupulous portion of the community which may be
assumed to exist in British India equally as in other countries.
Discretion.
It is submitted that the power to revoke (or to issue compulsory
licences under Section 23) is discretionary ; and need not be exercised
on a mala fide application even if the requisite grounds stated in the
Sections were in fact established.
This aspect of the matter was emphasised in England by the
Comptroller-General in Ilgner’s case when he referred to the safe-
guards which he could invoke under the Act and the Rules to make
it difficult for a dishonest application for revocation to be proceeded
with. The following extract of his observations as to this may be
noted : —
“I am however prepared to hold that the Comptroller has
power under the general practice of the Office and under Patents
Rules 80 and 81, to call the Applicant before him and examine him ;
or to call for a sworn declaration if necessary, or to appoint a
hearing at which both parties may be heard, and the proceedings
stayed where necessary. I shall be prepared to use these powers in
any cases where my attention is called to circumstances which raise
a presumption of mala files or dishonesty, or in any exceptional
case. I would further point out that a dishonest application even if
fully proved, need not be granted by the Comptroller under Section
27. The word used is “may ,, t which in my opinion gives the
Comptroller discretion to refuse a mala fide application in such
cases. There are further the powers as to costs under Section 39(1)
which may be used if necessary, against an Applicant. I think that
468 THE LAW OF PATENTS IN INDIA [Ch. XI
if the procedure outlined above is followed at this Office, it will meet
sufficiently every case of harshness or unfairness which a too strict
reading of the Section might entail upon a Patentee.” 33
It is submitted that the force of this decision is equally appli-
cable in respect of the Indian Act of 1911.
Costs.
It was held in England with regard to a Petition to the Board
of Trade for a compulsory license under the former Statutes, that
the Board of Trade had no power to make any order as to costs.
The disadvantage of this omission to give it the necessary power
was commented on both in the case of the Incandescent Gas Light
Company’s Patent (Meteor Petition) reported in (1898) 15. R. P. C.
727 and in the case of Bartletts Patent ( Gormully’s Petition) repor-
ted in (1899) 16. R. P. C. 641 at pages 651 and 652. It was no
doubt partly considerations of the expense oven to a successful
Petitioner of presenting a Petition before the Board of Trade which
accounted for the small number of Petitions which appear to have
been presented.
It is submitted that a similar position arises in regard to the
question of costs on a Petition for a compulsory license or revoca-
tion to H. E. the Governor-General in Council under Sections 22 and
23 of the Indian Patents & Designs Act of 1911. It would seem
that the mere words in Section 22(4) empowering H. E. the Governor-
General in Council to order the grant of licenses “on such terms as
he may think just” do not carry the power of making an order for
the payment of costs in connection with the filing or hearing of the
Petition. But the matter is not free from doubt. In this connection
it is to be observed that while Section 65 of the Indian Act expressly
gives to the Controller the power of awarding costs, there is no
Section giving such power to H. E. the Governor-General in Council
in regard to the proceedings which are to be had under the Act
before him.
Concurrent remedies.
It has been held in a decision on the construction of Section 27
of the English Act of 1907 in effect that there was nothing to pre-
vent a person in a proper case making an application to the Comp-
•• See (1909) 26. It. P. C. 198 at p. 203.
Ch. XI]
CONCURRENT REMEDIES
469
troller under that Section for revocation of a patent on the ground
of its being worked mainly or exclusively abroad, even though there
might at the time be a suit pending in Court in which the Patentee
was suing him for infringement. 34
The following passage from the decision of the Comptroller-
General in that case may conveniently here be noted : —
“I come finally to the particular circumstances of this case,
upon which I understood the Patentees’ Counsel to rely. It was
said that adopting the view that the Comptroller has a discretion to
call on the Applicant to make declarations, or to be examined before
him in exceptional circumstances, and even to refuse to proceed with
the case, it is a good ground for the exercise of such powers that an
action of infringement has been commenced by the Patentee against
the Applicant under Section 27, before the proceedings under that
Section were taken. In this case an action for infringement has
been commenced and the pleadings were closed before the Applica-
tion was filed. The defendant (the Applicant here) has not pleaded
as a defence under Section 25 that the Patent is worked mainly or
exclusively abroad, nor has he counterclaimed for the revocation of
the Patent under Section 32. Mr. Russell-Clarke contends under
these circumstances the Applicant has a perfect right to come here
and choose the simpler, cheaper, and more speedy process under
Section 27. I can see no answer to this, having regard to the fact
that under Section 21 (amendment of Specification), and under
Section 26 (revocation) it is specifically provided that where an
action for infringement is pending no application shall be made
under those Sections (except by leave of the Court in Section 26) and
that this provision was deliberately omitted in Section 27. Its
omission would thus seem by implication to authorize a defendant in
an infringement action to make an application under the Section.
Although, however, in my opinion such a defendant may rightfully
commence proceedings under Section 27, 1 think it is a matter for
consideration in each case whether it is right and proper that he
should pursue his remedy here, while an action for infringement is
pending elsewhere. The whole circumstances should be considered,
in each case ; above all the state of the action in the High Court, the
* 4 See Application for revocation of Ilgner’s Patents (1909) 36. R. P. 0. 198
at p. 204.
470
THE LAW OF PATENTS IN INDIA
[Ch. XI
pleadings and any other relevant facts. There might be cases where
the process would be an abuse, and used for improper purposes, and
in such cases the use of the Comptroller’s discretionary powers
would, I think, be amply justified. If for example, in any case it
was clearly shown that the Applicant was making use of the proceed-
ings here merely to fish out a case against the plaintiff* in an infringe-
ment action, I should be prepared unhesitatingly to use any of the
discretionary powers I possess. In this case, however, after careful
consideration, I do not think it necessary to call upon the Applicant
to leave a declaration or make any explanation. The pleadings were
closed in June before Section 27 came into operation, and Mr. Gray
very frankly admitted that in this case there was no question of mala
tides or suspicion. As I cannot assent to his view that the applicant
should in every case be called on for evidence, I must therefore
refuse to exercise any power that I have in this case and must conse-
quently call on the Patentees to leave their declarations at the Office,
in accordance with Patents Rule 79, within 14 days from the date of
this decision. I reserve the question of costs/’
It is submitted that the reasoning in the above decision is
equally applicable on the wording of the present Indian Act of 1911,
which is for all material purposes similar to that of the English Act
of 1907 there considered.
Appeal.
There is no appeal from any order made under Section 22 or
Section 23 of the Indian Act.
Comments.
The provisions at present contained in the Indian Patents &
Designs Act 1911 which are directed to preventing an abuse by
a patentee of his monopoly, do not appear to be satisfactory. They
are likely to be ineffective in one direction and oppressive in
another.
In cases where a person acting from the highest motives might
desire to take action for the public good against a patentee to
prevent an abuse of monopoly, the provisions will tend to be ineffec-
tive ; owing to the cumbersome and expensive nature of the pfoce-
dure ordained to be employed. In all probability a year will elapse
from the day when the applicant files his Petition to the day when
Ch. XI] COMPARISON WITH THE ENGLISH ACT AND RULES 471
that Petition is disposed of by H. E. the Governor-General in
Council. It will be inevitable that there will be delay before a
hearing can be given to what is after all in most cases a compara-
tively small matter, when there is so much other vital, more impor-
tant and more pressing business of state calling for prior fixtures.
As to the expenses, this will tend to be above the ordinary as the
solemnity and rareness of an occasion when a matter is to be placed
before such an august body as H. E. the Governor-General in
Council is to the ordinary citizen also above the ordinary : and he
will not as a rule trust to his own powers the task of putting for-
ward his Petition. Furthermore as already observed, it seems that
even a successful Petitioner will not be able to recover any of his
costs for the Proceedings before H. E. the Governor-General in
Council from his unsuccessful opponent. It was been remarked in
England that it was for the very same reasons that the provisions
contained in the Act of 1902 came to be almost a dead letter. If the
procedure of placing the requisite petition before the Board of Trade
was too cumbersome and too expensive for the ordinary business
man, as it was found to be, the Indian procedure will be even more
impracticable.
On the other hand in cases where a person acting from the
lowest motives may desire to use the provisions of the Act as a use-
ful means for obtaining information in regard to a competitor’s
trade and business which would normally be to him a closed book,
the proceedings will be effective enough to be highly oppressive
to the unfortunate patentee. The abuses, to which the Act, as it
stands, is open, have been sufficiently envisaged by Parker J. in the
judgment already referred to. It is only right to point out that in
India the position is not likely to be better than that which was
objected to in England : particularly in view of the fact that in
India there are no rules at all regulating the procedure on these
petitions in Patent matters to H. E. the Governor-General in Coun-
cil and accordingly it may be supposed that any patentee against
whom a Petition of this nature was brought would not feel safe in
defending himself against attack without putting forward in connec-
tion with his reply all the fullest possible particulars in the way of
facts and figures to justify his management of his monopoly. In
doing so he would be playing into the hand of an unscrupulous adver-
sary. And there would be nothing to prevent the Petitioner, in a
472 THE LAW OF PATENTS IN INDIA [<jh. XI
purely vexatious case, from withdrawing his petition at any stage
after he had considered that he had obtained enough information or
inflicted enough annoyance. Nor would there be anything to pre-
vent him repeating the treatment and putting forward another vexa-
tious Petition the next year.
It is submitted that it would be beneficial to all parties who
might be concerned regarding any dispute arising from an alleged
abuse of monopoly if the present provisions of the Act were amend-
ed on lines similar to those which have been adopted in the United
Kingdom : so as to give the power of making orders in regard to
petitions for abuse of monopoly to the Controller of Patents in the
first instance with the safeguard of an appeal if dissatisfied to the
High Court.
PART IV
PETITIONS TO THE CONTROLLER FOR REVOCATION
ON SURRENDER OF PATENT UNDER SECTION 24 :
REVOCATION BY NOTIFICATION
UNDER SECTION 25
Surrender of a Patent.
By Section 24 of the Indian Act it is provided as follows : —
“24. A patentee may at any time, by giving notice in the
prescribed manner to the Controller, offer to surrender his patent,
and the Controller may, if after giving notice of the offer and hear-
ing all parties who desire to be heard he thinks fit, accept the offer,
and thereupon make an order for the revocation of the Patent."
Applications under this Section will as a rule be purely formal.
They are not like other proceedings dealt with under this chapter
based on “objections" made by persons attacking the patent after
grant. These applications are merely mentioned here since proceed-
ings taken under Section 24 do in fact constitute another method of
obtaining revocation. In these proceedings it is the Patentee him-
self and no one else who is entitled to make the application.
Ch. XI] SURRENDER : REVOCATION BY NOTIFICATION 473
Revocation by Notification.
By Section 25 of the Indian Act it is provided aa follows : —
“29. A patent shall be deemed to bo revoked if the Governor
General in Council declares, by notification in the Gezette of India,
the patent or the mode in which it is exercised to be mischievous to
the State or generally prejudicial to the public."
This Section would appear to give H. E. the Governor-General
power to revoke a patent on his own initiative without any applica-
tion having been made by any person and irrespective of Sections 22
and 23. There does not appear to have been as yet any case of a
patent having been revoked under this section.
60
CHAPTER XII
PROCEDURE RELATING TO AMENDMENT OF A SPECIFICA-
TION— I. DEVELOPMENT OF THE RIGHT TO AMEND—
II. AMENDMENT BY THE CONTROLLER—
III. AMENDMENT BY THE COURT— PROCE-
DURE RELATING TO RECTIFICATION
OF THE REGISTER OF PATENTS
PART I
DEVELOPMENT OF THE RIGHT TO AMEND IN
BRITISH INDIA
Origin of the right to amend under English Law.
For a long period in the earlier history of Patents it was
beyond all possibility for a Patentee to obtain any amendment of his
Patent : except only an amendment of a clerical error appearing on
the face of it. The stringent limitations on monopolies which were
for the first time reduced to writing in the Statute of Monopolies,
(though it enacted no new law and was both in form and substance
merely declaratory of the existing law), and the vigorous spirit in
which the restrictions of that Statute were enforced by the Courts,
together with the jealous scrutiny with which all Patent rights in
general were examined by the Courts, with a view to protect the public
from unjust monopolies, created in the end, at one time, a result much
to the detriment of the Patentee . 1 It was in such circumstances that
the letters patent and the specification came to be treated as unalter-
able, clerical errors only excepted ; and any defect or flaw which
either of these instruments contained was held to be irremediable,
being interpreted most strictly against the Patentee.
In the Common Law courts this doctrine of protecting the
public at the expense of the patentee was pushed even further in
another respect ; and it came to be held that Letters Patent were
1 See Webster on Letters Patent at page 11.
Ch. XII]
DEVELOPMENT OF THE RIGHT TO AMEND
475
wholly void for any defect in part. Thus the Patentee was deprived
of the whole of his invention from the failure of some condition as
by want of novelty, in a very small part.
It was to amend this state of the law that in 1835 in England
the act, being 5 & 6 Will 4.c 83, was passed which was known as
Lord Brougham's Act. By this act it was provided, for the first
time, that a patentee might, with the consent of the proper law
officers of the Crown, amend the title and specification of his
Letters Patent. 2
Under Section 1 of the Act express provision was made in
effect that “a patentee might, (after obtaining leave of the Attorney-
General or Solicitor-General), enter with the Clerk of the Patents in
England a disclaimer of any part either of the title of the invention,
or of the specification, stating the reason for such disclaimer, or
might, with similar leave, enter a memorandum of any alteration in
the said title or specification, not being such disclaimer or such
alteration as should extend the exclusive right granted by his Letters
Patent. And that such disclaimer or memorandum of alteration
being filed by the said Clerk of the Patents and enrolled with the
specification should be deemed and taken to be part of such Letters
Patent or such specification in all Courts whatever/'
Then followed certain provisions providing for the possibility
of objection by persons entering caveats, the effect of amendments
on pending actions, and advertisement. It may be of interest in
passing to note the wording of these provisions which were the fore-
runners of present day practice in those respects. The following is
an extract of the material part of the said Section 1 : —
“ Provided always, that any person may enter a caveat , in like
manner as caveats are noiv used to be entered , against such disclaimer
or alteration ; which caveat , being so entered shall give the party
entering the same a right to have notice of the application being heard
by the Attorney- General or Solicitor- General, or Lord Advocate
respectively : Provided also , that no such disclaimer or alteration
shall be receivable in evidence in any action or suit (save and except
in any proceeding by scire facias ), pending at the time when such
disclaimer or alteration was enrolled , but in every such action or suit
the original title and specification alone shall be given in evidence ,
9 See Edmunds on Patents (1890 edn.) note at page 637.
476
THE LAW OF PATENTS IN INDIA
[ch. xn
and deemed and taken to be the title and specification of the invention ,
for ichich the letters patent have been or shall have been granted :
Provided also, that it shall be lawful for the Attorney- General or
Solicitor- General or Lord Advocate before granting such fiat, to
require the party applying for the same to advertise his disclaimer
or alteration in such manner as to such Attorney- General or Solicitor-
General or Lord Advocate, shall seem right and shall if he so require
such advertisement, certify in his fiat that the same has been duly
made ”
The Act was the beginning of the growth of the right in a
Patentee to amend his Specification. Lord Brougham’s Act of 1835
was repealed by the Act of 1883. By the Act of 1883 this right of
amendment was regulated by Sections 18 and 19 of the Act which
were worded as follows : —
"18(1) An applicant or a patentee may, from time to time by
request in toriting left at the Patent Office, seek leave to
amend his specification including drawings forming part
thereof by way of disclaimer, correction, or explanation,
stating the nature of such amendment and his reasons for
the same.
(2) The request and the nature of such proposed amendment
shall be advertised in the prescribed manner and at any
time within one month from its first advertisement any
person may give notice at the patent office of opposition to
the amendment.
(5) Where such notice is given the Comptroller shall give notice
of the opposition to the person making the request and shall
hear and decide the case subject to an appeal to the law
officer.
(4) The law officer shall, if required, hear the person making
the request and the person so giving notice, and being in the
opinion of the law officer entitled to be heard in opposition
to the request and shall determine whether and subject to
what conditions, if any, the amendment ought to be allowed .
(5) Where no notice of opposition is given, or the person so
giving notice does not appear, the Comptroller shall deter-
mine whether and subject to what conditions if any, the
amendment ought to be allowed.
Ch. xn]
( 0 )
PREVIOUS ENGLISH LAW
477
When leave to amend is refused by the Comptroller , the
person making the request may appeal from his decision to
the law officer.
( 7) The law officer shall, if required, hear the person making
the request and the Comptroller, and may make an order
determining whether and subject to what conditions, if any,
the amendment ought to be allowed.
(8) No amendment shall be allowed that would make the speci-
fication as amended, claim an invention substantially
different from the invention claimed by the specification as
it stood before amendment.
( 9 ) Leave to amend shall be conclusive as to the right of the
party to make the amendment allowed, except in case of
fraud ; and the amendment shall in all courts and for all
purposes be deemed to form part of the specification.
(10) The foregoing provisions of this section do not apply when
and so long as any action for infringement or other legal
proceeding in relation to a patent is pending.
19(1 ) In an action for infringement of a patent, and in a
proceeding for revocation of a patent, the Court or a judge
may at any time order that the patentee shall, subject to
such terms as to costs and otherwise as the Court or a
judge may impose, be at liberty to apply at the Patent Office
for leave to amend his specification by way of disclaimer,
and may direct that in the meantime the trial or hearing of
the action shall be postponed.”
From the wording of these two sections it is observed that
under Section 18 a definite procedure was laid down for appli-
cations being made for amendment before the Comptroller, and that
before him an application was open by way of disclaimer, correction
or explanation ; while under Section 19 provision was made for the
first time for the Court, also, in an action for infringement and in
proceedings for revocation to have the power of making an order
that a Patentee might be at liberty to apply at the Patent office for
amendment. It will be noted that under this Act of 1883 no positive
power was given to tho Court of itself to order any amendment but
only the power of allowing a Patentee to make an applioation at the
478
THE LAW OF PATENTS IN INDIA
[Ch. XII
Patient Office ; also that this power only went to the extent of allow-
ing him then to make an application for amendment by way of dis-
claimer and not by way of correction or explanation. Even so, the
provisions of this Act of 1883 must have been of great benefit to
Patentees who would otherwise, for some slight technically or error
in phrasing, have been faced with a certainty of losing both their
suit and their Patent.
The subsequent provisions of the Act of 1907 which were
embodied in Sections 21 and 22 were as follows : —
"21. ( 1 ) An applicant or a patentee may at any time , by request
in writing left at the Patent Office, seek leave to amend his specifica-
tion including drawings forming part thereof, by way of disclaimer,
correction or explanation, stating the nature of, and the reasons for,
the proposed amendment.
(2) The request and the nature of the proposed amendment
shall be advertised in the prescribed manner, and at any time within
one month from its first advertisement any person may give notice at
the Patent Office of opposition to the amendment.
(3) Where such a notice is given the Comptroller shall give
notice of the opposition to the person making the request, and shall
hear and decide the case.
(4) Where no notice of opposition is given, or the person so
giving notice of opposition does not appear, the Comptroller shall
determine whether and subject to ivhat conditions, if any, the amend-
ment ought to be allowed.
(5) The decision of the Comptroller in either case shall be
subject to an appeal to the laio officer, who shall, if required, hear the
person making the request to amend, and where notice of opposition
has been given the person giving that notice, if he is, in the opinion of
the law officer, entitled to be heard in opposition to the request and,
where there is no opposition, the Comptroller, and may make an order
determining whether and subject to what conditions (.if any ) the
amendment ought to be allowed.
(0) No amendment shall be allowed that would make the
specification , as amended, claim an invention substantially larger
than or substantially different from the invention claimed by the
specification as it stood before amendment.
Ch. XU]
PREVIOUS INDIAN LAW
479
(7) Leave to amend shall be conclusive as to the right of the
party to make the amendment allowed, except in case of fraud ; and
the amendment shall be advertised in the prescribed manner, ami shall
in all courts and for all purposes be deemed to form part of the
specification.
(8) This section shall not apply when and so long as any action
for infringement or proceeding before the court for the revocation of a
patent is pending.
22. In any action for infringement of a patent or proceedings
before the court for the revocation of a patent the court may by order
allow the patentee to amend his specification by way of disclaimer in
such manner, and subject to such terms as to costs, advertisement or
otherwise, as the court may think fit :
Provided that no amendment shall be so allowed that would
make the specification, as amended, claim an invention substantially
larger thin, or substantially different from, the invention claimed by
the specification as it stood before the amendment and where an appli-
cation for such an order is made to the Court notice of the application
shall be given to the Comptroller, and the Comptroller shall have the
right to appear arid be heard, and shall appear if so directed by the
Court.”
Here it will be observed power was for the first time given to
the Court itself in its own jurisdiction to order an amendment : but
only by way of disclaimer.
It was the Act of 1919 by its amendment of Section 22 of the
Act of 1907 (that is by the amendment effected in tho schedule of
the Act of 1919) whereby in Section 22 of the Act of 1907 after the
words “by way of disclaimer” there were inserted the words “correc-
tion or explanation”, which eventually extended to the Court during
an action for infringement and in a proceeding for revocation
powers similar in extent to the powers of the Comptroller. The
position has remained unaltered in the current English Act of 1982.
Previous Indian Law : progressive extension for the benefit of the
Patentee of the right to amend in India.
In India it appears that tho history of the development of the
Patentee’s right to amend has followed a different course. It appears
that as early as 1856 under Section 29 of that Act it was intended to
480
THE LAW OF PATENTS IN INDIA
[Ch. XII
provide statutory provision in India to the effect that certain defects
in a specification were not to be fatal to the privilege ; and that such
defects might be amended by the Court, if by such amendment no
injury was caused to the public. 3
It may be observed that under that Act, while all Petitions for
exclusive privileges under that Act were to be made to the Governor-
General in Council and all grants of exclusive privileges were made
by him, at the same time it was provided that all questions of
validity or invalidity were to be decided by the Court. There was
of course at that time no Patent Office. It may therefore be
supposed that the power of amendment was given to the Court as
being a suitable constituted body then in existence in India capable
of exercising it in practice satisfactorily : possibly it was considered
by the framers of that Act as impracticable for the Governor-General
in Council to be required to adjudicate on minor questions relating
to amendment, as it would be for him to adjudicate on lengthy
disputes concerning the legal validity or invalidity of a Patent which
were decided by the Court. It may well be that this Act which by
chance gave to the Court a power of ordering amendments in its own
jurisdiction which the Courts in England did not possess till a much
later date, was only in intention following out the principles
underlying Lord Brougham’s English Act of 1835. In England leave
was required to be obtained from the Law Officers and after that the
amendment was actually effected by the Clerk of the Patents : while
in India at that time there being no Clerk of the Patents (and, it
seems, no corresponding Law Officers) both the granting of leave and
the actual effecting of the amendment was put in the hands of the
Court.
In fact the Act of 1856 by reason of certain legal defects never
became operative and was replaced by the Act of 1859. 4
By Section 14 of the Act of 1859, following again, as it appears,
what had been the underlying principles of Lord Brougham’s
English Act of 1835, it was provided as follows : —
“14. If, after the filing of the specification, the Petitione r
shall have reason to believe that through mistake or
* See Act VI of 1856 and Theobald's Legislative Acts of the Governor-
General in India in Council (1868 edn.) Vol. II at p. 397.
4 See Appendix No. 4.
Ch. XII]
THE ACT OF 1859
481
inadvertence he has erroneously made any mis-statement
in his petition or specification, or included therein some-
thing which at the date of his petition was not new
or whereof he was not the inventor, or that such speci-
fication is in any particular defective or insufficient, he
may petition the Governor-General in Council for leave
to file a memorandum pointing out such error, defect, or
insufficiency, and disclaiming any part of the alleged
invention, or, in case of any defect or insufficiency of the
specification, for leave to file an amended specification.
The petition shall state how the error, defect, or in-
sufficiency occurred and that it was not fraudulently
intended, and shall be accompanied by a declaration in
writing signed by the petitioner, and if he be absent
from India by his agent, stating that the contents of
such petition are true to the best of his knowledge and
belief. Upon such petition the Governor-General in
Council may make an order allowing such memo-
randum or amended specification to be filed. All the
provisions of Sections X, XI and XIII, applicable
to specifications, shall be applicable to the petitions,
orders, and memoranda or amended specifications re-
ferred to in this Section. An amended specification filed
under the provisions of this Act shall, except as to suits
or proceedings, relating to the exclusive privilege
which shall be pending at the time of the filing of
such amended specifications, have the same effect as if
it had been the specification first filed, provided that
nothing contained in an amended specification shall
extend or enlarge any exclusive privilege before
acquired.”
But from this it will be observed that the application for
amendment was under this part of the Act required to be made to
the Executive side of Government that is to say to the Governor-
General in Council. And the only person who could make such an
order for amendment was the Governor-General in Council.
At the same time power was expressly given to the Court to
order an amendment of a specification at the hearing of any applica-
61
482
THE LAW OF PATENTS IN INDIA
[Ch. XII
tion under ‘Sections 24 and 25 of that Act (that is to say at the
hearing of certain applications in effect for revocation of the Patent),
as was expressly provided in Section 30 of the Act of 1859 which
was worded as follows : —
“30. If the Court, at the hearing of any such application as
last aforesaid, shall think that the petitioner ha9, in the
description of his invention in the petition or specifica-
tion (if any) included something which at the date of
the petition was not new or whereof he was not the
inventor, or that the specification is in any particular
defective or insufficient, but that the error, defect, or in-
sufficiency was not fraudulently intended, the Court may
adjudge the said exclusive privilege to have been acquir-
ed and to be valid, save as to the part thereof affected
by such error, defect, or insufficiently, or if the Court
shall think that the error, defect, or insufficiency can be
amended without injury to the public, they may adjudge
the exclusive privilege in the whole of the invention to
be valid, and may, upon such terms as shall appear
reasonable, order the specification to be amended in any
of the said particulars ; and thereupon the petitioner,
his executors, administrators, or assigns shall, within
the time limited by the said Court for the purpose, file
a specification amended according to such order. Pro-
vided that no such amended specification shall have the
effect of extending or enlarging the exclusive privilege
before acquired.”
In this respect giving the Court power to amend during the
hearing the Indian Act of 1859 is ahead of the corresponding legis-
lation in England at that time. The reasons for giving the Courts
in India the power to make the orders itself may however as indi-
cated have been due to factors of administrative convenience :
since there was no Clerk of the Patents or Comptroller of Patents or
Patent Office or other convenient office to whom the work could
have been delegated.
By the Act of 1888 little alteration was made i Sections 18
and 19 of that Act being worded as follows : —
18. (1) If, after the filing of the specification, the applicant
Ch. XII]
THE ACT OF 1888
483
has reason to believe that through mistake or inadvert-
ence he has erroneously made any mis-statement in his
application or specification or included therein some-
thing which at the date of the delivery or receipt of his
application was not new or whereof he was not the
inventor, or that the specification is in any particular
defective or insufficient, he may apply to the Governor-
General in Council for leave to file a memorandum
pointing out the mis-statement or disclaiming any part
of the alleged invention, or for leave to file an amended
specification, as the case may be.
(2) The application must be in writing signed by the
applicant, and must state how the error, defect or in-
sufficiency occurred and that it was not fraudulently
intended.
(3) Upon the application the Governor-General in Council
may make an order allowing the memorandum or
amended specification to be filed.
(4) The provisions of Section 6, with respect to applica-
tions, and of Sections 9 and 11 with respect to specifica-
tions shall apply, so far as they can be made applicable,
and copies thereof to applications, and to amended
specifications, respectively, made and filed under this
section.
19. An amended specification filed under the last foregoing
section shall, except as to any suit or proceeding relating
to the exclusive privilege which may be pending at the
time of the filing of the amended specification have the
same effect as if it had been the specification first filed :
Provided that nothing in an amended specification shall be
construed to extend or enlarge an exclusive privilege
before acquired.
Sub-sections 2, 3, and 4 of Section 36 of that Act which
relate to the power of the Court to make orders of amendment were
as follows ; —
36. (2) If it appears to the High Court, at the hearing of
any such applications as last aforesaid that the appli-
484
THE LAW OF PATENTS IN INDIA
[Ch. XII
cant has, in the description of his invention in the
application for leave to file a specification thereof or in
the original or any amended specification, erroneously
included something which at the date of the delivery or
receipt of the application for leave to file the specifica-
tion was not new or whereof he was not the inventor, or
that the specification is in any particular defective or
insufficient, but that the error, defect or insufficiency
was not fraudulently intended, the Court may adjudge
the exclusive privilege to have been acquired and to bo
valid save as to the part thereof affected by the error,
defect or insufficiency : or
(3) If it appears to the High Court that the error, defect or
insufficiency can be amended without injury to the
public, the Court may adjudge the exclusive privilege
in respect of the whole of the invention to be valid, and
may, upon such terms as it thinks reasonable, order the
specification to be amended in any particular in which
it is erroneous, defective or insufficient ; and thereupon
the applicant shall, within a time to be limited by the
Court for the purpose, file in the office of the Secretary
a specification amended according to the order.
(4) The provisions of Section 18 with respect to the dis-
tribution and disposal of copies of amended specifica-
tions and of Section 19 with respect to the effect of
such specifications, shall apply, so far as they can be
made applicable, to an amended specification filed under
this section.
The next Act after 1888 was the Act of 1911 which is the Act
now in force. It was this Act which set up the Indian Patent Office
as it now exists and the Controller of Patents in India. The Sec-
tions of this Act relating to amendment are respectively Section 17
regarding amendment by the Controller and Section 18 regarding
amendment by the Court.
It was not till 1930 that power was given to the Indian Courts
to make orders for amendment otherwise than by way of disclaimer ;
when the 1930 Act made an amendment in Section 18 of the 1911
Indian Act corresponding precisely to the amendment made in the
Ch. xn]
NECESSITY FOR AMENDMENT IN PRACTICE
English Act of 1907 by the English amending Act of 1919. By
Section 12 of the Act of 1930 the words “correction or explanation”
were inserted after the word “disclaimer” in Section 18 of the
principal Act of 1911.
Frequent necessity for amendment in practice.
The principle of the Common Law remains even at the present
day unaltered whereby it is held that if a Patent is defective in
certain respects in part, the Patent is bad in toto and consequently
void.
Thus where a Patent or an application for Patent has several
claims and one or more of such claims are bad either by reason of
being too wide and including matter which is not new or for any
other reason, then though there may remain one or more claims
which are good in themselves when standing alone, yet the whole
Patent will be bad and the Patentee will be deprived of the ad-
vantage of even those claims which in themselves arc good : unless
leave can be obtained to amend the Patent so as to strike out and
omit those portions which are bad, or except, since 1930, where the
discretion of the Court can bo involved under Section 35A.
Without here giving numerous examples of cases where it
becomes a matter of great if not vital importance to the Patentee to
obtain leave to amend his application or his Specification, it becomes
at once obvious that such a necessity will in practice frequently
arise.
While the statement to be found in Webster on Letters Patent
at p. 17 that “the patentee was liable to be deprived of his patent
from the failure of some condition such as want of novelty in a very
small part of the invention, insufficient description, ambiguous
terms uselessness of parts, inadequacy of means, indefinite claims,
surplusage, no proper distinction between new and old, or some
objection to the specification as not being a true, full, clear and
faithful account of the invention” does not remain true so as to
mean that suoh defects are now fatal and final and cannot be
amended, yet it does still remain substantially true in the sense that
such defects may still be fatal unless they arc amended.
Amendments are readily allowed :
The tendency is to allow amendments readily. The view now
generally taken of the matter is, that, in a case where an amendment
486
THE LAW OF PATENTS IN INDIA
[Cta. XII
is properly requested, the position amounts to this, that the Crown
has purported to make a grant which is not valid : therefore it is
obviously fitting that the Patentee should be allowed to amend so as
to have his grant in proper order and in valid form provided that
he can do so without injuring the rights of the public and without
extending the scope of his monopoly. Each case will depend on its
own facts and can only be decided on its own merits.
PART II
AMENDMENT BY THE CONTROLLER
Amendment of Application or Specification : by the Controller :
before application is accepted.
As already stated (see Ch. IX at p. 366), after the application
for a patent has been submitted with the specification and drawings
to the Controller, there follows a process of examination of these by
the Patent Office for the purpose of seeing that the application is in
order in respect of certain specific requirements. These requirements
are stated in para 5 of the Indian Patents & Designs Act of 1911.
If these requirements are not fulfilled it is open to the Controller at
his discretion in a proper case to require that the application, speci-
fication or drawings be amended before he proceeds with the appli-
cation. [ See Section 5(1) ].
In this case, as is seen from the wording of the section, any
amendment ordered is made as a result of the directions of the
Controller acting suo motn on his discretion.
Amendment of application or specification : at the request of the
applicant for Patent : before the Controller : before appli-
cation is accepted.
If the applicant for patent wishes to amend his application or
specification or drawings he may ask for leave from the Controller
to do so. [See Section 17(1)]. Where the application has not reached
the stage of being accepted by the Controller the matter rests merely
between the applicant and the Controller. This is only reasonable
since no one else has then had notice of the extent of the monopoly
Ch. XII]
AMENDMENT BY THE CONTROLLER
487
claimed in the application and no one but the applicant is affected.
It is for the Controller theq to determine whether and subject to
what conditions, if any, the amendment will be allowed. The Con-
troller in such case has full power to decide the matter without
further ado himself. This clearly appears from Section 17(2) of the
Act of 1911.
Amendment of application for Patent or specification : at the
request of the applicant for Patent : before the Controller :
after application has been accepted.
Where the application has passed the stage of being accepted
it still remains open to the applicant for Patent to ask at any time
for leave from the Controller to amend the application or specifica-
tion or drawings. He may make such application for amendment
before the Controller at any time during the whole life of the Patent.
[See again Section 17(1)]. But in this case, it is necessary for the
matter to be advertised in order that any persons interested may
give notice of their opposition before any amendment can be allowed
by the Controller. Section 17 of the Act of 1911 reads as follows : —
“17. (1) An applicant or a patentee may at any time, by
request in writing left at the Patent Office and accom-
panied by the prescribed fee, seek leave to amend his
application or specification, including drawings forming
part thereof, by way of disclaimer, correction or expla-
nation, stating the nature of, and the reasons for, the
proposed amendment.
(2) If the application for a patent has not been accepted,
the Controller shall determine whether and subject to
what conditions (if any) the amendment shall be allowed.
(3) In any other case the request and the nature of the
proposed amendment shall be advertised in the pres-
cribed manner, and at any time within three months
from its first advertisement any person may give notice
at the Patent Office of opposition to the amendment.
(4) Where such a notice is given the Controller shall give
notice of the opposition to the person making the
request, and shall hear and decide the case.
(5) Where no notice of opposition is given or the person
THE LAW OF PATENTS IN INDIA
[Ch. XII
so giving notice of opposition docs not appear, the Con-
troller shall determine whether and subject to what
conditions, if any, the amendment ought to be allowed.
(6) The decision of the Controller in either case shall be
subject to an appeal to the Governor-Qeneral in
Council.
(7) No amendment shall be allowed that would make the
application or specification, as amended, claim an inven-
tion substantially larger than, or substantially different
from, the invention claimed by the application or speci-
fication as it stood before amendment.
(8) Leave to amend shall be conclusive as to the right of
the party to make the amendment allowed, except in
case of fraud ; and the amendment shall be advertised in
the prescribed manner, and shall in all Courts and for
all purposes be deemed to form part of the application or
specification.
(9) This section shall not apply when and so long as any
suit for infringement or proceeding before a Court for
the revocation of the patent is pending.”
The steps of the procedure, which is laid down by Section 17
and by the Rules arc thus as follows : —
(i) The application for amendment is made in writing and left
at the Patent Office, stating the nature of and reasons for the pro-
posed amendment. [(Section 17(1).]
(ii) The request and the nature of the proposed amendment
is advertised in the prescribed manner and certain interested persons
notified [Section 17(2) and see Rule 30].
(iii) Any person may then within three months of the first
advertisement give notice at the Patent Office of opposition to the
amendment [Section 17(3) and see Rule 31].
(iv) After three months have elapsed, if there is no opposition
to the amendment, the Controller deals with the application for
amendment in the same way as in a case where an application is
made before the application for Patent has been accepted : and
himself decides the matter without further ado forthwith. [See
Section 17(5)].
Ch. XII]
PROCEDURE
489
Alternatively :
(iv) If there is opposition forthcoming to the amendment then
the Controller is required by the Act of 1911 to give notice of the
opposition to the person making the request for amendment. [Sec-
tion 17(4) & Rule 31.]
(v) In this case, where there is opposition, the Controller then
proceeds to hear and decide the case : that is whether the amendment
is to be allowed or not. [Rule 31 & Rules 20, 21 & 22.]
The procedure outlined above is considered in detail under the
next following headings.
Form of application for amendment of application for Patent or of
Specification before the Controller.
If the application is merely for the correction of a clerical
error under Section 62, the application may be made on Form No. 28.
Otherwise any application to be made under Section 17 of the Act
for the amendment of an application or a specification (including
drawings) i9 to be made on Form No. 11 and is required to be accom-
panied by a copy of the application, specification or drawings,
showing in red ink the proposed amendment in such a manner as to
indicate clearly the alteration desired. The matter is regulated by
Rules 29 to 32 of the Indian Patents & Designs Rules, 1933.
The Fee.
If for a clerical error only, the fee will be Rs. 7 only.
Otherwise the prescribed fee is Rs. 10, if the application for
amendment is made before the application for Patent is accepted by
the Controller. And Rs. 20, if afterwards.
As to Advertisement and notice.
Rule 30 of the Indian 1933 Rules provides as follows : —
“If the request relates to an application for a patent which has
been accepted, the request and the nature of the proposed amend-
ment shall be advertised by notification in the Gazette of India and
in such other manner, if any, as the Controller may in each case
direct. The Controller shall also notify all persons whose names,
at the time of the request, are entered on the register as claiming
an interest in the Patent.”
The object of such advertisement is to give notioe of the
62
490
THE LAW OF PATENTS IN INDIA
[Ch. XII
proposed amendment to any persons who may be interested in the
Patent but whose names are not recorded on the register. The new
Rule 30 takes the place of both rule 23 and rule 45 of the Indian
1912 Rules.
As to notice of opposition
Who can oppose.
The wording of Section 17(3) of the Act of 1911 is that ‘ any
person” may give notice of opposition to the amendment within
three months from its first advertisement. The words “any person”
here used are the same as the words used in the Indian Section 9(1)
relating to notice of opposition to a grant of a Patent.
In regard to the construction of that section it has already
been shown how the words “any person” have to be read with a
limited meaning as if the words were “any interested person”.
It is submitted that in proceedings in opposition to amend*
ment, the term “any person” used in Section 17(3) of the Act has a
similarly restricted meaning ; and is actually limited to mean in
effect any person who has a certain degree of interest personally
in the amendment. It is submitted that the position is the same
as in proceedings in opposition to the grant of a patent. 3 And it is
submitted that the Controller should refuse to hear in the proceed-
ings before him any person who does not show such sufficient
interest. It is also submitted that it is open to the applicant for
the amendment on his part to take, in such proceedings before the
Controller, an objection that the opponent to the proposed amend-
ment has not sufficient personal interest to entitle him to oppose.
In regard to the question what degree of interest is necessary
by a person who wishes to oppose an application for an amendment,
such interest will, it is submitted, be similar to the interest required
in an opponent in proceedings in opposition to the grant of a Patent.
As to this reference may be made to Chapter X where this point has
already been fully discussed.
No application for amendment can be made before the Controller
during pending court proceedings.
It must be emphasised that no such application for amendment
as has been discussed in the last two paragraphs can be made before
3
See page 403 above.
Ch. xn] NOT DURING PENDING COURT PROCEEDINGS 491
the Controller at all when and so long as any suit for infringement
or proceedings before a Court for the revocation of the Patent is
pending. In such event any application has to be made to the Court:
which matter is further considered hereafter.
This is the effect of the provisions of Section 17(9) of the Act
of 1911, which provides that Section 17 shall not apply when and so
long as any suit for infringement or proceeding before a Court for
the revocation of the patent is pending.
Amendments ordered by the Controller to be made under
Section 5 of the Act of 1911 arc not of course affected by Section
17(9). Since the application for Patent has in cases contemplated
by Section 5 not reached the stage of being accepted by the Con-
troller it follows that it is not possible for any suit contemplated by
Section 17(9) to exist, there being no complete Patent in such case
to form the subject matter of such suit.
Where a suit has been instituted and proceedings have been
taken in Court in regard to the Patent in connection with which the
patentee may wish to make applications for amendment, questions
may arise whether the suit or proceeding is pending so as to con-
stitute a bar to his making his application before tho Controller
or not.
It has been held in the case of In re National Carbon Coy.
Ltd., 9 by the Calcutta High Court that it is open to a Patentee to
apply to the Controller for amendment of his specification even
during the interval after the delivery of judgment in an infringement
suit which had been instituted by him in the Calcutta High Court
and before the filing of an appeal which was filed by the Defendant
in such suit. It was held by Panckridge J. in the coruse of his
judgment in that case, that there was not in such circumstances, at
the time when the application for amendment was presented to the
Controller, any suit for infringement “pending”. 7
Nature of amendments allowable by the Controller on application
made to him.
Section 17(1) refers to a request for leave to amend an appli-
cation or specification including drawings forming part thereof ‘‘by
• (1933) 38 C. W. N. 729, or 61, Cal. 450.
T See also Cropper v. Smith (1884) 28. Ch. D. 148.
492 THE LAW OF PATENTS IN INDIA [Ch. XII
way of disclaimer, correction or explanation”. And it is further
provided by Section 17(7) as follows : —
“No amendment shall be allowed that would make the appli-
cation or specification as amended, claim an invention
substantially larger than, or substantially different from,
the invention claimed by the application or specification
as it stood before amendment.”
It is clear from this that any amendment seeking to add new
matter or relating to new invention or to an improvement going
beyond the invention contemplated in the original application or
specification is not allowable. 6
Effect of the Controller’s order where leave to amend has been
granted.
Section 17(8) provides as follows : —
“Leave to amend shall be conclusive as to the right of the
party to make the amendment allowed, except in case
of fraud ; and the amendment shall be advertised in the
prescribed manner, and shall in all Courts and for all
purposes be deemed to form part of the application or
specification.”
Right of Appeal.
The decision of the Controller, as to the proposed amendment
whether the amendment is opposed or not, is subject to an appeal
to the Governor-General in Council. [See Section 17(6)].
Restriction on recovery of damages.
Section 19 of the Act of 1911 provided as follows : —
“Where an amendment of a specification by way of disclaimer,
correction or explanation has been allowed under this
Act, no damages shall be given in any suit in respect
of the use of the invention (before the date of the deci-
sion allowing the amendment) unless the patentee
establishes to the satisfaction of the court that his
original claim was framed in good faith and with reason-
able skill and knowledge.”
* For a consideration of the nature of amendments which may be allowed
and illustrative cases see Terrell (8th edn.) at p. 229 et seq.
Ch. XII] CORRECTION OF CLERICAL ERROR 493
Necessity of advertisement after amendment effected.
The Section above quoted prescribes also that the amendment
Bhall be advertised in the prescribed manner.
Such advertisement is required to be made in every case of an
amendment made by the Controller or at the request of the applicant
for a patent or patentee, that is to say under Section 17 of the Act
of 1911, whether there has been any opposition to the amendment or
not.
The practice is for such advertisement to be published in the
Gazette of India and in two or more newspapers or technical journals
if directed by the Controller.
There is no provision under the Act or under the Rules making
it necessary for an amendment to be advertised where the amend-
ment has been made under Section 5 of the Act of 1911 by the Con-
troller before the application of patent has been accepted. Thore
is no necessity for any such advertisement since no one apart from
the applicant himself has then as yet had any notice of the extent
of the monopoly claimed in the original application or specification
as stood before amendment.
Application to Controller for amendment of application or of speci-
fication where the amendment is merely to correct a clerical
error.
This is a different matter to that which has in this chapter
been so far considered. This is regulated by Section 62 of the Act
of 1911. Under Section 62 the Controller may “On request in
writing accompanied by the prescribed fee correct any clerical
error in or in connection with an application for a patent or in any
specification”.
The application in such case is made on Form No. 20. 9
The prescribed fee is then Rs. 5.
In such case no advertisement of the application for amendment
is required whether the application for patent has been accepted or
not : the Controller has power to deal with the matter himself forth-
with.
See Appendix No. 5 below.
494 THE LAW OF PATENTS IN INDIA [Ch. XII
PART m
AMENDMENT BY THE COURT
Amendment of an application for a Patent or specification (or of a
specification by the Patentee) : before the Court.
Section 18 of the Act of 1911 provides as follows : —
“In any suit for infringement of a patent or proceeding before
a Court for the revocation of a patent the Court may by order allow
the patentee to amend his specification by way of disclaimer, correc-
tion or explanation in such manner, and subject to such terms as to
costs, advertisement or otherwise, as the Court may think fit.
Provided that no amendment shall be so allowed that would
make the specification, as amended, claim an invention substantially
larger than, or substantially different from, the invention claimed by
the specification as it stood before the amendment, and where an
application for such an order is made to the Court notice of the
application shall be given to the Controller, and the Controller shall
have the right to appear and be heard."
Apart from this section there appear to be no Buies made by
any of the High Courts in India in regard to the procedure to be
followed when an application is made to the Court by the patentee
for leave to amend his application for Patent or his specification.
It may be of service however to refer to the provisions of the
English Rules relating to such matters. These are to be found in
Order 53A Buie 21 of the Buies of the Supreme Court. 10
PART IV
ENTRIES IN AND RECTIFICATION OF THE REGISTER
Entries in the Register . 11
Entries in the register have an especial importance in view of
the Yidentiary value which is given to them under the Act and in
10 See Appendix No. 3 below. Also the comments contained in the (Eng-
lish)Annual Practice 1935 at p. 1008. Compare also (English) R.S.C. Order 53A
Rule 6.
11 For the statutory provisions regarding the Register of Patents see Sec-
tions 58 to 64 of the Indian Act of 1911 : also Rules 49 to 61 of the 1933 Rules.
Ch. XII]
RECTIFICATION OF THE REGISTER
495
particular under Section 63. In all cases where there is a whole or
partial transfer of the ownership of a Patent, as when any assign-
ment of it is made or any license in respect of it is granted, it
becomes advisable to have particulars of the fact registered in the
Register. Circumstances therefore frequently occur when it becomes
necessary for an interested person to apply for entries to be recorded
in the Register of Patents. The making of such entries is governed
by Section 63 of the Indian Act of 1911.
Rectification of the Register.
Provision for rectification of the Register of Patents is contain-
ed in Section 64 of the current Indian Act of 1911, which is worded
as follows : —
“64(1) The Controller may, on the application in the prescribed
manner of any person aggrieved by the non-insertion in or omission
from the register of patents or designs of any entry, or by any entry
made in either such register without sufficient cause, or by any entry
wrongly remaining on either such register, or by an error or defect
in any entry in cither such register, make such order for making,
expunging or varying such entry as he thinks fit and rectify the
register accordingly.
(2) The Controller may in any proceeding under this section
decide any question that it may be necessary or expedient to decide
in connection with the rectification of a register.
(3) An appeal shall lie to the High Court from any order of
the Controller under this section ; and the Controller may refer any
application under this section to the High Court for decision, and
the High Court shall dispose of any application so referred.
(4) Any order of the Court rectifying a registcrer shall direct
that notice of the rectification be served on the Controller in the
prescribed manner, who shall upon the receipt of notice rectify the
register accordingly.
(5) Nothing in this section shall be deemed to empower the
Controller —
(a) to rectify the register of patents, or to decide any ques-
tion relating to a patent, otherwise than for the
purpose of correcting a mistake of fact apparent from
a reference either to the patent itself or to some order
496
THE LAW OF PATENTS IN INDIA [Ch. XII
of a competent authority made under any other
provision of this Act, or
(i h ) to make any such order cancelling the registration of a
design as is provided for in Section 51 A ; >}
Prior to the Act of 1930 it was only by an application to a
High Court and not to the Controller that such rectification could
be effected. 12
11 At the time when the amendment of the 1930 Act was made as above
stated, the making of the consequential amendment in the marginal note to the
section appears to have been overlooked : since in the official Patent Office Hand-
book this is still worded “Rectification of register by Court.” This presumably is in
error, since under the current Act it seems clear that a High Court has no jurisdic-
tion to entertain the original hearing of an application for rectification of the
Register of Patents and has no jurisdiction to dispose of an application for recti-
fication of the Register of Patents at all (apart from a case where the matter is
referred to it by the Controller under Sec. 64(3)), except on appeal from a decision
of the Controller.
CHAPTER XIII
PROCEDURE RELATING TO EXTENSION OF THE TERM
OF A PATENT— PROCEDURE RELATING TO
RESTORATION OF A LAPSED PATENT
PART I
EXTENSION
The Ordinary term.
The term of the monopoly of a Patent in India was originally
fourteen years until the year 1930. By Section 9 of the Indian Act
of 1930 the word “sixteen” was substituted for the word “fourteen”
in Section 14(1) of the Indian Patents & Designs Act of 1911 ;
and thereby the effective term of a patent in British India was made
to be sixteen years ; as it is now. 1
Power of extension : previous English law.
Originally the only manner in which a Patentee could obtain
any extension of the period of fourteen years limited by the Statute
of Monopolies for the period of his Patent, was by the obtaining
of the passing of a private Act of Parliament. There were several
instances in which this was done. The following instances may be
mentioned : — Juites Patent for making stone pipes which was on
the ground of lack of remuneration extended in favour of an
assignee for fourteen years in 1743 by an Act of 16 Geo. II c. 25.
Pownoll’s Patent for an engine for raising ballast or dredging
extended for fourteen years in 1749 by an Act of 23 Geo. II o. 33
on the ground that after the patentee’s death his young children
had not been able to work it and accordingly there had been a lack
of remuneration. Cookworthy’s Patent relating to the making of
porcelain extended in 1775 by an Act of 15 Geo. Ill c. 52 ; Watt’s
Patent (for steam engines) extended in (1775) by an Act of 15
Geo. Ill c. 61 : Liardet's Patent for cement or stucco for walls
1 In England until the year 1919 the term of the currency of the monopoly
of a Patent was for fourteen years. By the Act of 1919 Section 17 of the prin-
cipal act was amended so that the term was made to be a period of sixteen years ;
as it is now.
63
498
THE LAW OF PATENTS IN INDIA
[Ch. xra
extended for lack of remuneration in 1766 for eighteen yeara by
an Act of Geo. Ill o. 29 : in that case the extension was made
subject to the conditions that the Patentee was not to take more
than a certain price for the cement, that the patent was not to be
transferred to more than five persons, that a new specification of the
invention was to be enrolled, that the Act was not to hinder the
use of any other cement, and that every objection that the cement
was not a new invention sufficient to invalidate the patent was to
be a bar to any action brought under the Act. Hartley’s Patent for
applying iron plates to wooden buildings and ships as a protection
against fire, extended for lack of remuneration in 1777 by thirty
one years by an Act of 17 Geo. Ill c. 6 : in that case the prolonga-
tion was made on similar conditions to those imposed in Liardet’s
case and on a further condition that the invention might be applied
without license in any buildings used in fitting out or victualling
the King’s ships of war. Dr. Bancroft’s Patent for a process of
vegetable dyeing extended in 1785 by fourteen years by an Act of
25 Geo III c. 38 : on the ground that the inventor had lost the
benefit of his patent through the American war. Turner’s Patent
for a yellow ochre for painting coaches, extended in 1792 by eleven
years by an Act of 32 Geo. Ill c. 72 on the ground of lack of remu-
neration due to secret piracies : in that case the extension was
granted upon the following conditions, that the patentee should
not sell the patented article at more than five hundred guineas per
hundredweight and otherwise on similar conditions to those men-
tioned in regard to Liardet’s extension. 2
Then by Lord Brougham’s Act of 1835 (being 5 & 6 Will 4.
c. 83) by Section 4 thereof the Privy Council were given jurisdiction
to hear petitions for the prolongation of the term of the monopoly
of a patentee and express power was created for the Crown to grant
an extension up to seveu years ; by granting new letters patent for
the invention for a term not exceeding seven years after the expira-
tion of the first term.
The wording of this Section 4 as originally passed which is of
interest as follows : —
“And be it further enacted, that if any person who now hath
or shall hereafter obtain any letters patent as aforesaid shall
* See Edmunds at p. 373 d seq.
Ch. Xinj DEVELOPMENT OF THE RIGHT TO CLAIM EXTENSION 499
advertise in the London Oaxette three times , and tn three
London papers , and three times in some country paper
published in the town where or near to which he carried
on any manufacture of anything made according to his
specification , or near to or in tvhich he resides in case he
carried on no such manufacture , or published in the county
where he carried on such manufacture or where he lives in
case there shall not be any paper published in such town,
that he intends to apply to His Majesty in Council for a
prolongation of his term of sole using and vending his
invention, and shall petition Ihs Majesty in Council to
that effect, it shall be lawful for any person to enter a
caveat at the Council Office ; and if His Majesty shall refer
the consideration of such petition to the Judicial Committee
of the Privy Council, and notice shall first be by him given
to any person or persons who shall have entered such
caveats, the petitioner shall be heard by his Counsel and
witnesses to prove his case, and the persons entering caveats
shall likewise be heard by their Counsel and tvitnesses ;
whereupon , and upon hearing and inquiring of the ivhole
matter, the Judicial Committee may report to His Majesty
that a further extension of the term in the said letters
patent should be granted , not exceeding seven years and Ilis
Majesty is hereby authorixed and empowered, if he shall
think fit, to grant new letters patent for the said invention
for a term not exceeding seven years after the expiration
of the first term, any custom, or usage to the contrary in
anywise notwithstanding :
Provided that no such extension shall be granted if the appli-
cation by petition shall not be made and prosecuted with
effect before the expiration of the term originally granted in
such letters patent
In 1839, by the English Statute of 2 & 3 Yict. c. 67 Section 1,
the proviso contained in the last sentence of the said Section 4
was repealed 5 since it was found that in some cases parties desirous
of obtaining an extension, who might have presented a petition
before the expiration of the term, might nevertheless be prevented
by causes over which they had no control from prosecuting with
600 THE LAW OF PATENTS IN INDIA [Ch. XIII
effect their application before the Judicial Committee of the Privy
Council.
In 1884, by the English Statute of 7 & 8 Viet. c. 69, under
Section 2 thereof further power was created to grant extension in
special cases up to fourteen and not merely seven years. The
wording of the Section may be of sufficient interest to be here
quoted : —
"And whereas it is expedient for the further encouragement
of inventions in the useful arts to enable the time of mono-
poly in patents to be extended in cases in which it can be
satisfactorily shown that the expense of the invention hath
been greater than the time now limited by law will suffice
to reimburse : be it enacted. That if any person having
obtained a patent for any invention, shall before the expira-
tion thereof present a petition to Her Majesty in Council,
setting forth that he has been unable to obtain a due
remuneration for his expense and labour in perfecting such
invention, and that an exclusive right of using and vending
the same for the further period of seven years in addition
to the term in such patent mentioned will not suffice for his
reimbursement and remuneration, then if the matter of such
petition shall be by Her Majesty referred to the Judicial
Committee of the Privy Council the said Committee shall
proceed to consider the same after the manner and in the
usual course of its proceedings touching patents, and if the
said Committee shall be of opinion and shall so report to
Her Majesty that a further period greater than seven years
extension of the said patent term ought to be granted to
the petitioner, it shall be lawful for Her Majesty, if she
shall so think fit, to grant an extension thereof for any
time not exceeding fourteen years, in the like manner, and
subject to the same rules as the extension, for a term not
exceeding seven years is now granted under the powers of
the said Act of the sixth year of the reign of His late
Majesty ”
In 1883 by the English Aot of 1883 by Section 113 thereof
the enactments abovementioned were repealed and the provisions
ch. xm]
PREVIOUS ENGLISH LAW
501
regarding extensions were set but in Section 25 of the Act of 1883
as follows : —
“25. (1) A patentee may , after advertising in manner directed
by any rules made under this section his intention to do so, present
a petition to Her Majesty in Council, praying that his patent may
be extended for a further term ; but such petition must be presented
at least six months before the time limited for the expiration of the
patent.
(2) Any person may enter a caveat, addressed to the registrar
of the Council at the Council Office, against the extension.
(3) If Her Majesty shall be pleased to refer any such petition
to the Judicial Committee of the Privy Council the said Committee
shall proceed to consider the same, and the petitioner and any person
who has entered a caveat shall be entitled to be heard by himself or by
counsel on the petition.
(4) The Judicial Committee shall in considering their decision,
have regard to the nature and merits of the invention in relation to
the public, to the profits made by the patentee as such and to all the
circumstances of the case.
(5) If the Judicial Committee report that the patentee has been
inadequately remunerated by his patent, it shall be law fid for Her
Majesty in Council to extend the term of the patent for a further
term not exceeding seven, or in exceptional cases fourteen years ; or
to order the grant of a new patent for the term therein mentioned,
and containing any restrictions, conditions, and provisions that the
Judicial Committee may think fit.
(6) It shall be lawful for Her Majesty in Council to make, from
time to time, rules of procedure and practice for regulating proceed-
ings on such petitions, and subject thereto such proceedings shall be
regulated according to the existing procedure and practice in patent
matters of the Judicial Committee.
(7) The costs of all parlies of and incident to such proceedings
shall be in the discretion of the Judicial Committee ; and the orders
of the Committee respecting costs shall be enforceable as if they were
orders of a division of the High Court of Justice.*’
It is remarked in Edmunds on Patents 3 that in the Act of 1883
* See at p. 378.
502
THE LAW OF PATENTS IN INDIA
[Ch. XIII
for the first time the term “extension* ** was nsed in place of the term
“prolongation.” At the time when he was writing in the. year 1890,
it was of some importance for him to observe, that, as the provisions
for extension in the Act of 1888 did not come into effect until the
year 1898, the law and practice for prolongation of Patents as it had
existed before 1883 would continue to be resorted to until 1898 ;
and he may be supposed to have emphasised the two different
expressions, “prolongation” and “extension” for convenience in
referring to the two systems. For present day purposes suoh dis-
tinction appears now to be immaterial.
The principles stated in this Section 25 of the Act of 1883
appear to have been in the main merely declaratory of the principles
upon which the Judicial Committee of the Privy Council had in
practice acted under the previous Statutes which had been repealed
by that Statute. As to those principles, that is to say in regard to
the exercise of their jurisdiction for the extension of patents, it has
been stated in effect that the Judicial Committee considered them-
selves as representing the legislature to a certain degree, and that
they were invested with somewhat similar powers of discretion to
those exercised formerly by Parliament ; that extension had never
been granted by them as a matter of course ; that the Judicial Com-
mittee as a rule recommended an extension if grounds were estab-
lished similar to those on which private Acts of Parliament had
been passed suoh as are recited in such old Acts ; that at the same
time it had never been their course to put themselves precisely in
the position of the legislature ; and that since Lord Brougham's Act
had been passed with the view of providing a remedy easier and
cheaper than a petition to Parliament, it was the practice of the
Judicial Committee to recommend extension in cases in which a
private Act of Parliament would never have been obtained, where
such cases were meritorious enough as regards the individual, bene-
ficial enough as regards the public and deficient enough as to remu-
neration to justify an extension. 4
In 1907 by Section 18 of the English Act of 1907 it was pro-
vided that petitions for revocation should be made to the Supreme
Court (instead of to the Privy Council) and the power to extend for
* See Edmunds at p. 389 and the cases there cited j where the practice
regarding petitions for extension before the Privy Council is fully considered.
Ch. XIII]
PRESENT ENGLISH LAW
603
a further term, as before, not exceeding seven or, in exceptional
cases, fourteen years was given to the Court. It would appear that
the Court continued to act on the same principles in granting or
refusing extensions as had been acted on previously to 1907 by the
Privy Council.
In 1919 amendments were made in Section 18 of the principal
Act whereby the maximum periods of extension were reduced from
seven to five years or for exceptional cases from fourteen to ten
years respectively and the petition was allowed to be presented in
the discretion of the Court at any time up till the date of the
expiry of the patent. Apart from such minor amendment the provi-
sions regarding extension in the United Kingdom since 1907 have
been substantially the same as are current at the present day.
Present English Law.
The relative provisions regarding extension which are opera-
tive at the present day in the United Kingdom are contained in
Section 18 of the English Patents & Designs Act 1907-1932 which is
as follows : —
18. (1) “A patentee may, after advertising in manner provided
by rules of Supreme Court his intention to do so, present a petition
to the Court praying that his patent may be extended for a further
term, but such petition must be presented at least six months before
the time limited for the expiration of the patent :
Provided that the Court may allow such a petition to be
presented at such time, not being later than the time limited for the
expiration of the patent, as the Court may in its discretion think
fit.
(2) Any person may give notice to the Court of objection to
the extension.
(3) Ou the hearing of any petition under this section the
patentee and any person who has given such notice of objection shall
be made parties to the proceeding, and the Comptroller shall be
entitled to appear and be heard, and shall appear if so directed by
the Court.
(4) The Court, in considering its decision, shall have regard to
the nature and merits of the invention in relation to the public, to
604 THE LAW OP PATENTS IN INDIA [Ch. xm
the profits made by the patentee as such, and to all the circumstances
of the case.
(5) If it appears to the Court that the patentee has been in*
adequately remunerated by his patent, the Court may by order extend
the term of the patent for a further term not exceeding five years,
or, in exceptional cases, ten years, or may order the grant of a new
patent for such term as may be specified in the order and containing
any restrictions, conditions, and provisions the Court may think
fit.
(6) Where, by reason of hostilities between His Majesty and
any foreign state, the patentee as such has suffered loss or damage
(including loss of opportunity of dealing in or developing his inven-
tion owing to his having been engaged in work of national impor-
tance connected with such hostilities) an application under this
section may be made by originating summons instead of by petition,
and the Court in considering its decision may have regard solely to
the loss or damage so suffered by the Patentee :
Provided that this sub-section shall not apply if the patentee is
a subject of such foreign state as aforesaid, or is a company the
business whereof is managed or controlled by such subjects or is
carried on wholly or mainly for the benefit or on behalf of such
subjects, notwithstanding that the company may be registered within
His Majesty’s dominions.”
Previous Indian Law.
In 1859 under Section 4 of Act 15 of 1859 it was provided as
follows : —
“4. If, within the space of six calendar months from the date
of suoh order, the petitioner cause a specification of his invention to
be filed in manner hereinafter mentioned, the petitioner, his executors,
administrators, or assigns, shall be entitled to the sole and exclusive
privilege of making, selling and using the said invention in India,
and of authorizing others so to do, for the term of fourteen years
from the time of filing such specification, and for such further term
(if any) not exceeding 14 years from the expiration of the first four-
teen years as the Governor-General of India in Council may think fit
to direct, upon petition to be presented by such inventor, at any
period not more than one year, and not less than six calendar-
Ch. XIII]
PREVIOUS INDIAN LAW
505
months, before expiration of the exclusive privilege hereby granted.”
Thereby provision was made for possible extension up to 14 years
by H. E. the Governor-General in Council upon petition duly
presented.
In 1888 under Sections 15 & 16 of Act 5 of 1888 it was pro-
vided as follows : —
15. (1) The inventor of a new manufacture may, at any time
not more than one year and not less than six months before the time
limited for the expiration of an exclusive privilege acquired under
Section 8, apply to the Governor-General in Council for an extension
of the privilege for a further term.
(2) When an application is made under sub-section (1) the
Governor-General in Council may, if he thinks fit, refer it to a High
Court for report.
(3) The Court to which the application is referred shall, in
making its report, have regard to the nature and merits of the invent
tion in relation to the public, to the profits made by the inventor as
such, and to all the circumstances of the case.
(4) The procedure on the reference shall be such as the Court
thinks fit, and may include the issue of citations calling upon persons
claiming to have any interest in the reference to appear before the
Court on the day on which the reference is to be considered, or on
any day to which the consideration thereof may be adjourned, and
make with respect thereto any representation which they may see fit
in relation to any of the matters to which the Court is required
by the last foregoing sub-section to have regard in making its
report.
(5) If the Governor-General in Council is of opinion or where
a reference has been made under sub-section (2), if the Court reports,
that the inventor has been inadequately remunerated by his exclu-
sive privilege, the Governor-General in Council may, on a payment
of the fee prescribed in that behalf in the fourth schedule make an
order extending the term of the privilege for a further term not
exceeding seven or, in exceptional cases, fourteen years from the
expiration of the first term of fourteen years.
(6) But an exclusive privilege of which the term has been
extended under the last foregoing sub-section shall, notwithstanding
anything in that sub-section, cease if the inventor fails to pay before
64
500
THE LAW OF PATENTS IN INDIA
[Ch. xm
the expiration of eaoh year of such extended term the fee prescribed
in the schedule aforesaid in respect of the continuance of the
privilege.
16. An order under Section 6, sub-section (1), authorising the
filing of a specification, or under Section 15, sub-section (5) extend-
ing the term of an exclusive privilege, may be made subject to such
conditions as the Governor General in Council thinks expedient.”
It is to be observed that there is little difference between the
effect of those provisions and the provisions of the current Act now
in force.
Present Indian Law.
The current provisions as to extension in British India are
contained in Section 15 of the Indian Patents & Designs Act of
1911 as amended by Act 7 of 1930. The later Act restricted the
maximum period of extension ordinarily allowable to five years aud
in exceptional cases ten years where it had been seven and ten res-
pectively under the Act of 1907 : apart from this it merely made a
verbal amendment in regard to the provision for advertisement.
These provisions are to the following effect : —
“15. (1) A patentee may present a petition to the Governor-
General in Council praying that his patent may be extended for a
further term ; but such petition must be left at the Patent Office at
least six months before the time limited for the expiration of the
patent and must be accompanied by the prescribed fee and must be
advertised by the patentee within the prescribed time and in the
prescribed manner.
(2) Any person may within such time as may be prescribed
and on payment of the prescribed fee give notice to the Controller
of objection to the extension.
(3) Where a petition is presented under sub-section (1), the
Governor-General in Council may, as he thinks fit, dispose of the
petition himself or refer it to a High Court for decision.
(4) If the petition be referred to a High Court, then on the
hearing of such petition under this section the patentee, and any
person who has given notice under sub-section (2) of objection, shall
be made parties to the proceeding, and the Controller shall be
entitled to appear and be heard.
Ch. XD1]
PRESENT INDIAN LAW
507
(5) The Court to which the petition is referred shall, in
considering its decision, have regard to the nature and merits of tho
invention in relation to the public, to the profits made by the patentee
as such, and to all the circumstances of the case.
(6) If it appears to the Governor-General in Council, or to
the High Court when the petition has been referred to it, that the
patentee has been inadequately remunerated by his patent, the
Governor-General in Council or the High Court as the case may be,
may by order extond the term of the patent for a further term not
exceeding five or, in exceptional cases ten years, or may order the
grant of a new patent for such term as may be specified in the order
and subject to the payment of such fees as may be prescribed and
containing any restriction, conditions and provisions which the
Governor-General in Council or the High Court, as the case may be,
may think fit :
Provided that any patent so extended or granted shall, notwith-
standing anything therein, or in this Act, cease if the inventor fails
to pay before the expiration of each year the prescribed fee.
The Tribunal.
It is to be observed that the tribunal by whom the Petition will
be decided may be either H. E. the Governor-General in Council if
he thinks fit to dispose of the petition himself, or a High Court if
H. E. the Governor-General in Council thinks fit to refer the petition
to a High Court for decision.
The Relief.
The maximum period of extension which such tribunal is
empowered to grant is five years, or, in exceptional cases ten years.
It is to be noted that the section (in sub-section 6) also contains
a provision to the effect that, alternatively to an extension such
tribunal “may order the grant of a new patent for such term as may
be specified in the order”. In view of this provision it would seem
that such tribunal is empowered if it thinks fit to grant a new patent
for the full patent period of sixteen years. Such a Patent it may be
supposed, will however seldom be granted except for such a term
as that for which the old Patent might have been extended.
In making any order for extension, or for a new patent, the
tribunal may impose any restrictions! conditions and provisions whioh
it may think fit.
508
THE LAW OF PATENTS IN INDIA
[Ch. xra
Discretion.
No patentee in any circumstances has any legal right to an
extension. The grant is now, as it has always been, a matter of
discretion and in the nature of an equitable reward. Just as, in the
United Kingdom, the Court now acts on the same principles upon
which in exercising its jurisdiction under the previous acts the Privy
Council acted, which in its turn acted largely upon the principles
upon which the private Acts of Parliament originally used to
be enacted, so, it is submitted, H. E. the Governor-General in
Council in India or the Court will act on the same principles and be
guided by the same considerations. The cases of decisions of the
Privy Council are therefore still applicable. For the purposes of the
present work however it would appear unnecessary to review in
detail the cases decided by the Privy Council under the jurisdiction
exercised by it under the Acts previous to the English Act of 1907 ;
and it will be sufficient if in this chapter reference is made only to
a certain Indian decision and certain English cases decided by the
Courts in England since the year 1907.
Grounds in general.
In the United Kingdom under sub-section 6 of Section IS of the
English Patents Acts of 1907-1932 there is a special provision
allowing applications to be made by way of Originating Summons
instead of by way of Petition where the application for extension is
made on the ground of war-losses. One advantage of such procedure
is that, all evidence being on affidavits, time and money is saved.
There is however a more vital benefit to patentees who can bring
themselves within that part of the section, in that it is, by virtue of
the express wording of the sub-section referred to, made un-
necessary for them on such applications to establish any other
grounds of merit or anything else beyond only the one ground, that
“by reason of hostilities between His Majesty and any foreign state,
the patentee as such has suffered loss or damage (including loss of
opportunity of dealing in or developing his invention) owing to his
having been engaged in work of national importance connected with
such hostilities”.
It need only be pointed out that there is no provision in the
Indian Act corresponding to Section 18(6) of the English Statute.
Accordingly the very numerous English oases where application has
Ch. XIII]
GROUNDS FOR EXTENSION
509
been made by Originating Summons on the ground of war-loss are
not directly applicable in British India. For the sake of simplicity
reference in this chapter has only been made to English cases in
which the petition was made otherwise than under the English
Section 18(6).
As to grounds : Comments on Section 15(5).
It may be noticed that Section 15(5) of the Indian Act is only
applicable to cases where there is a “Court to which the petition is
referrcd , \ From the wording of this sub-section it would follow that
where H. E. the Governor-General in Council* not being such a
Court, disposes of the Petition himself, he need not in considering
his decision have regard to any of the matters mentioned in that
sub-section. It can hardly be supposed that this was the meaning
of the Legislature ; and in practice it may be assumed that the
grounds and matters mentioned in the sub-section would be
considered by II. E. in Council if the Petition was dealt with without
reference to a High Court. It would rather seem that the words
“the Court” have crept into the Indian Act unnoticed being taken
from the corresponding passage of the English Act. There would
seem no real justification for making any difference between the
grounds on which a Petition will be decided if disposed of by
H. E. the Governor-General in Council and the grounds upon
which the same Petition will be decided if disposed of by a
High Court.
On the other hand as pointed out in the recent Indian case
of India n Casablcincas High Draft Coy . v. Milloivners 9 Association of
Ahmedabad 5 it will be for the very reason that the matter involves
the taking of evidence and the determination of questions of fact
requiring a judicial decision, that II. E. the Governor-General in
Council will ordinarily refer a case to a High Court. In the nature
of things it will be difficult if not impossible for H. E. the
Governor-General in Council to conduct a judicial enquiry such as
will involve the taking of evidence. Accordingly in practice it may
well be that it will only be in an enquiry conducted by a High Court
on a reference that the matters mentioned in sub-section (5) of
Section 15 will be fully gone into.
gee (1935) 59. Bom. 564.
510
THE LAW OF PATENTS IN INDIA
[Ch. xm
Grounds in particular.
The grounds mentioned in the Indian Patents & Designs Aet
itself as those which are to be considered are : —
1. That the patentee has been inadequately remunerated by
his patent. It is also stated that regard shall also be had to : —
2. The nature and merits of the invention in relation to the
public.
3. The profits made by the patentee as such.
4. All the circumstances of the case.
In considering whether the patentee has been inadequately
remunerated it has been the consistent practice in England to take
no account of inadequate remuneration which has been due to the
default of the lmtentee or his own neglect in working his patent.
For practical purposes in view of the practice which has been
established in decided cases the points to be made out by the
patentee may be considered under the following heads : —
1. Merit of the invention.
2. Inadequate remuneration.
3. No laches or default on the part of the patentee causing
such inadequate remuneration.
4. Other circumstances : such as : —
(a) Special circumstances : e.g. : in relation to the manner in
which the Patent has been owned and managed ; and in
respect of the position as to similar foreign patents.
( b ) The utmost good faith.
5. Whether the grounds (1 to 4 above) are such that the case
is an exceptional case such as to call for an extension of more than 5
years.
As to the grounds to be considered by the tribunal on a
Petition for extension the following general observations of
Luxmoore J. in a modern case, where the principles are very well
put, is of interest : —
“In exercising the discretion which is given to the Court by
the Section it is plain that there are three things whioh have to be
considered before any extension at all is granted. The three matters
which have to be considered are, the nature and merits of the
Ck. XUI]
MERIT OF THE INVENTION
511
invention in relation to the public, the profits made by the patentee,
and all the circumstances of the case. If after consideration of
those three heads the Court comes to the conclusion that an
extension should be granted, then, if the extension is to be for a
period in excess of five years the Court has to consider other
matters. It has to consider whether the case is an exceptional one
or not ; and in this respect, of course, it must be borne in mind
that in the ordinary case where an extension is granted that is
itself an exceptional case.”
Merit of the invention.
The merit to be established comprises to some extent both a
degree of utility in the invention and a degree of ingenuity exercised
by the patentee. It is obvious that the mere degree of utility
necessary to support a patent, that is to say to save a patent from
being held invalid for want of utility, is not sufficient to support a
petition for extension of that patent. For the latter purpose an
exceptional degree of utility is required to be established in order to
establish exceptional merit such as is not possessed by the ordinary
run of patents. As to the element of ingenuity, it is hardly
possible to lay down any general rule or principle or to say more
than that this is one of the elements which may in some cases be
considered in weighing whether or not there is a sufficient degree of
merit in the invention to warrant an extension of the Patent. As an
instance where the ingenuity and brain-work of the Patentee was
given considerable weight by the Court in arriving at a conclusion
that the invention was a meritorious one, reference may be made to
the case of Perry and Brown’s Patents (cited below). But it is to
be observed that in that case there was also great utility to the
public. As was said in one case by Sargant J. in words since often
quoted with approval : — “the Court has to find as a condition
precedent to its exercising its discretion in favour of the patentee,
that there has been some considerable benefit given to the public by
the inventor in respect of (the) invention. The Patent must be one
of more than ordinary merit and utility, and, of the two, it appears
to me, having regard to the words “in relation to the public”, that
the utility is an even more important factor than the inventiveness
or skill shown in making the invention.” 6
• See Trantom'a Potent (1917) 34. R. P. 0. 28 at p. 37.
512
THE LAW OF PATENTS IN INDIA
[Ch. XIII
It is obvious that the importance to the public of an invention
will often bear no proportion at all to the ingenuity or lack of
ingenuity shown by the inventor in achieving the invention. Again
as has been pointed out in other cases a predominantly important
invention may depend upon a minute inventive step which may yet
be vital.
It has been held in one case that the apparent simplicity of
an invention may enhance rather than diminish its merit. 7
It has been stated that there must be some character of public
interest established in the patent. On this principle patents which
lead to an improvement relating to public health, safety or comfort
are in a favourable position when renewal is sought. 8
The Position of an assignee as to merit.
Apart from any question of procedure as to the necessity or
not of having the original patentee a party to the application for
extension, and apart from any question of inadequacy of remunera-
tion, to both of which matter reference will be made hereafter, there
have been in England somewhat conflicting decisions on the point
whether or not an assignee of a patent should be considered to be in
as favourable a position as an original grantee of a patent when
applying for extension.
It would appear that the modern view at least (like that which
is stated in Fletcher Moulton atq). 313 to have been the earlier view,
before the tide turned against assignee-applicants) is that an applica-
tion for extension by a patentee who is an assignee is treated in
regard to the question of merit on the same footing substantially as
an application for extension by a patentee who is the original
grantee. 9
T See Stoney’s Patent (1888) 5. R. P. C. 313 at p. 522.
8 See eg Perry & Brown's Patents (1931) 48. R. P. 0. 200 at p. 213
relating to Gyro-compasses for navigation. Bisehof's Patent for purification of
water, (1884) 1. It. P. 0. 162 ; Shone? s Patent , relating to drainage (1892) 9. R. P.
C. 438 ; Lyon's Patent for a disinfectant (1894) 11. R. P. C. 537 ; Currie & Timrnis
Patent for railway signals (1898) 15. R. P. C. 63 (P. 0.) ; Bee Fletcher Moulton at
p. 306 and other cases there cited.
• See also Terrell (8th cdn. 1934) p. 298, Fletcher Moulton p. 313 : but as to
inadequacy of remuneration to an assignee see further at p. 514 below.
ch. xin]
POSITION OF AN ASSIGNEE
513
There is one good reason why it is desirable that this should be
the principle to be adopted : that it is for the benefit both of the
inventor and of the public that there should be the prospect of
a proper reward for those persons who had assisted the inventor to
develop the new manufacture.
It might also become impossible for a Patentee to deal commer-
cially with his patent in any effective or profitable manner towards
the end of its life, if, though it should be a patent of outstanding
merit, yet an assignee were to be regarded as having no prospect of
obtaining an extension for it. It will be remembered that in some
cases it is impossible, by reason of the nature of the patented article,
for a patentee to expect to obtain any adequate remuneration within
sixteen years. Such cases arise for example where the patent is in
relation to ships or machinery which wear out but slowly and where
replacements owing to the nature of existing conditions can be made
only at long intervals of time. In all such cases it is apparent that
great hardship might be inflicted on a patentee if his assignee had
no chance of obtaining an extension for the patent in question.
It is to be noted further that the person referred to in
Section 15 throughout is “the patentee.” In view of the definition
of a patentee as “the person for the time being entered on the
register of patents kept under this Act as the grantee or proprietor
of the patent”, which has been embodied in Section 2(12) of the
Indian Patents & Designs Act since 1930, and in view of the corres-
ponding definition in England under Section 93 of the English
Patents & Designs Acts 1907-1932 which has been effective since the
year 1919 it would seem even the more unreasonable now to adopt
for the administration * of Section 15 any other principle than the
one submitted above as to the equal standing of an assignee with
that of a grantee in an application for extension.
Inadequate remuneration.
It is of course difficult to lay down any principle as to what
will and what will not be considered to be inadequate remunera-
tion.
In many of the reported Petitions for extension which have
succeeded the Petitioner has been able to show that great expense
either in conducting experiments or in perfecting the invention or in
settingup machinery or factories specially for the invention in
65
514
THE LAW OF PATENTS IN INDIA
[Ch. XIII
question have been incurred and as against such expenditure the
profits have shown a definite loss : in other cases while there has
been no loss, that the profits when reckoned against such expenditure
have not shown any adequate remuneration.
It has been held in the recent Indian case already cited 10 that in
considering the question of the remuneration which has been enjoyed
by the Patentee regard must be had not only to remuneration
received by him in British India but also to any remuneration
received by him abroad (in all countries where the invention was
registered or exploited). See the following passage in the judg-
ment of Kania J. on this point : —
“The decisions in In re Bowcr-Barff Patent and In re Adair’s
Patent 11 suggest that when an extension of a patent is asked for, it
would be legitimate for the Court to inquire what profits the inven-
tor had made since its registration, and that inquiry may not be
limited to what the inventor earned in his country but might include
profits made by him in all countries where the invention was regis-
tered or exploited. It further appears that in such case the Court
insists on a full disclosure of the profits made by the inventor or his
assignees, and when the Court believes that there has not been a full
or bona fide disclosure, the Court may summarily reject the appli-
cation ”
Inadequacy of remuneration : whose remuneration is the criterion ?
In many if not most cases it will have happened that the
Patent will have changed hands during its life. In such cases ques-
tions will arise as to the relative importance of the various amounts
of remuneration obtained by the various persons who have owned
the Patent from time to time. The question is, when a Petition for
extension is put forward by an assignee, whether his remuneration
alone is the important criterion, or the original Patentee’s remunera-
tion or the total remuneration of both or the total remuneration of
all persons who have owned the patent in sequence, that is to
say the remuneration earned by the Patent itself irrespective of the
persons benefited, or what.
In this respect it has been clearly decided in England by
Luxmoore J. in the case of In the Matter of Patents of Maschinenfa-
10 The Indian Gasablaneas High Draft Company v. The Milloicners } Associa-
tion of Ahmedabad (1935) 59 Bom. 564 or 37 Bom. L. R. 187.
1 1 1895. A.C. 675 ; and 1881. 6. App. Cas 176 respectively.
Ch. XIU]
INADEQUATE REMUNERATION
515
brik Augsberg-Nurmberg A. 0 , 12 that it is not sufficient to consider
the profit made by the assignee ; you must consider the profits
made by the patentee as such ; and that this includes the profits
made by the original patentee and all subsequent holders.
The passage containing the material observations which is of
interest may be noted :
“It becomes necessary to consider the second point, namely,
the question of the Patentee's remuneration. In this connection it
is necessary to bear in mind that the Petitioners arc the assignees of
the Patent and are sub-licensees. When the Privy Council dealt
with the question of extension it was difficult for an assignee of a
patent to obtaiu any extension at all. But the practice is I think
less stringent today. The assignee, however, is always treated as
being of less merit than the original inventor, 13 but it has been
recognised that unless an assignee can in a proper case get an exten-
sion you arc in fact putting a fetter in the way of the inventor. I
think the authorities are unanimous that in all extension cases an
important matter for consideration is the position of the inventor
of tho original patent. The position is I think explained in TIopkin -
son’s Patent (1897) 14. R. P. C. 5 at page 9. Lord Hobhousc who
delivered the decision of the Board, says this : “The claims of
assignees were the subject of consideration in the case of Claridge’s
Patent , which was decided in the year 1851. The judgment of the
Board was delivered by Sir J. Jervis. He pointed out that assignees,
though their right to petition was recognised, were not to be treated
with the same indulgence as patentees. In that case, Claridge the
inventor, had received ample satisfaction. The Company, his assig-
nees, had entered into a commercial speculation, and their loss was
not a ground for prolongation of the patent." Now, what is the
position here ? The Petitioners bought these Patents towards the
end of their existence for a sum £800. They spent considerable
money in exploiting them and have not in fact made any profit on
their purchase. But it is not sufficient to consider the profit made
by the assignee ; you must consider the profits made by the Patentee
11 (1930) 47. R. P. 0. 193 at p. 212.
la It is submitted that this means only that in so far as it is the individual
position of either which is considered it is that of the original inventor which is
given more weight.
516
THE LAW OF PATENTS IN INDIA
[Oh. xm
as such. This includes the profits made by the original patentee and
all subsequent holders. In the present case the original holder was
the M. A. N. and the M. A. N. in fact made no profit out of the
Patents in suit beyond the share of the purchase consideration and
the share of the royalties paid on gas holders erected under the
licence. There is no evidence before me as to the amount of these
profits and this may well be a serious objection to the Petition/'
Laches or default.
An extension will not be obtainable even if there has been
inadequate remuneration if this has been caused by the neglect or
default of the Petitioner himself. It seems also that an extension
may similarly be refused where the inadequate remuneration has been
caused by the neglect or default of a person other than the Petitioner
himself at a time when such person was the Patentee.
Other circumstances : foreign patents.
In considering the question of inadequacy of remuneration the
amount of remuneration obtained by the Patentee from foreign
patents for the same invention may be taken into account as a
reason not to grant an extension. See the remarks above.
Other circumstances : good faith.
Since the exercise of the tribunal of its power to grant or
refuse an extension is a matter of discretion, and since it is more
often than not impossible for the^Tribunal to investigate the truth
or untruth of the statements made by the Petitioner as grounds for
his application for extension, it has been always recognised and
emphasised that it is essential that in putting forward such Petition
the Petitioner is bound to exercise the utmost good faith. He must
state without concealment or distortion or inaccuracy all material
facts relating to the circumstances in which he is asking for an
extension. If it is found that he has not fulfilled his obligations in
regard to such a duty, this will be treated as a bar to his obtaining
any extension.
Exceptional extension.
As was observed by Luxmoore J. In the Matter of Perry <&
Brown’s Patents 14 every case in which an extension at all is granted
14 (1931) 48. R. P. C. 200.
Ch. xni]
THE THREE REQUIREMENTS
517
is an exceptional case. For a case therefore to be a proper case for
■more than five years extension, such a case must be in an appreciable
degree even more exceptional still. The following extracts from the
observations of the learned Judge in his judgment in that case put
the whole matter very clearly : —
“In exercising the discretion which is given to the Court by the
Section it is plain that there are three things which have to be con-
sidered before any extension at all is granted. The three matters
which have to be considered are, the nature and merits of the inven-
tion in relation to the public, the profits made by the patentee, and
all the circumstances of the case. If after consideration of those
three heads the Court comes to the conclusion that an extension
should be granted, then, if the extension is to be for a period in
excess of five years, the Court has to consider other matters. It has
to consider whether the case is an exceptional one or not ; and in
this respect, of course, it must be borne in mind that in the ordinary
case where an extension is granted that is itself an exceptional case.
Let me consider, first, the three requirements which the
Statute has laid down for consideration, first of all, the nature and
merit of the invention in relation to the public. Both the inventions
in this case arc of the highest ingenuity. They relate to a most
recondite subject matter. Both inventions, I think, arc only possible
to a highly trained engineer, physicist, or mathematician. Obvious-
ly the nature of the inventions is one only possible to a man of
exceptional capacity. The inventions have only to be explained for
their merit to be self-evident. Their value from the public point of
view is obvious. Anything which makes navigation easier and
safer must be of the greatest importance to the public. I have no
doubt whatever that the first condition is amply fulfilled.
Then the second condition is with regard to the profits made
by the Patentee as such. In some respects the accounts which have
been put before the Court are not as satisfactory as they might be,
or such as the Court might possibly require in an ordinary case. No
separate accounts in respect of this Patent, or the working of tbiB
Patent, have, in fact, been kept, but the accounts of the business
in which the Patentee has been interested have been properly kept
during the whole of the time, and accountants have been employed to
prepare the necessary accounts to show what has been expended and
518
THE LAW OF PATENTS IN INDIA
[Ch. xm
what has been received in respect of these particular Patents. Those
accounts have been submitted to the Comptroller, who in turn has
employed skilled accountants to consider the whole matter ; and there
is no doubt whatever from the accounts which have been kept that
the Court is in a position to say without any doubt whatever that,
not only has the inventor not been adequately remunerated, but he
has, in fact, made a substantial loss. Whether the loss is £L8,000
or £13,000 does not seem to matter. It is not like the ordinary case
where there has been some remuneration to the Patentee, but he is
unable to satisfy the Court how much that remuneration is. In the
present case there is no doubt whatever that there has been a loss,
and I do not think in the circumstances that this case comes within
any of the decisions with regard to the failure to keep proper
accounts, or to satisfy the Court with regard to remuneration at all.
In my view, the Petitioner has amply satisfied me that he has made
a loss and a fortiori that he has been inadequately remunerated in
respect of his invention.
I do not think there is any other particular circumstance I
have to consider in the present case. There is certainly nothing in the
general circumstances of the case to prevent me from saying that
this is a case in which an extension ought to be granted.
In those circumstances, and having come to the conclusion
that there should be an extension, the question is : What is the
amount of that extension ? Is it to bo limited to the five years
which are mentioned in sub-section (5), or is this one of the excep-
tional cases in which I am at liberaty to grant up to ten years
extension ?
As has been said in many of the cases, it would be most un-
wise to lay down any general rule with regard to what is an excep-
tional case. All these matters are matters of discretion, but there is
no doubt whatever that the merit of the invention is one of the
main considerations which the Court has to take into account. I
think that it is probably right to say that the exceptional cases may
fall into three main classes : first of all, if the Court is satisfied that
the invention is of exceptionally inventive ingenuity and also satis-
fies the condition that it is useful to the public. That, of course, is
with regard to the exceptional character of the invention itself. I
have little doubt that both the inventions in the present case fall
Ch. XIII]
EXCEPTIONAL EXTENSION
519
within that head. The second head, I think, is, if the invention has
sufficient merit to warrant an extension, and is also of exceptional
benefit to the public. Here again I have no doubt that the benefit
to the public in a case of this kind is undoubtedly exceptional.
The third head is : if, upon a review of the whole of the cir-
cumstances of the case, it appears that the invention is inherently of
such a character that it must take longer than usual to get it on the
market. This may be referred to as the business element. You
must consider the class from which the purchasers are to be drawn.
I think you must consider the amount of loss which has been made,
and the period during which that loss has been made, and how long
it is likely to take before that loss is wiped out and a proper remu-
neration earned by the inventor for his particular invention. In
my view, both these inventions fall within the third class as well.
Quite obviously gyro-compasses are expensive to make, and the
class requiring to buy them must necessarily be limited. It must
aUo necessarily take a long time to establish the invention. The
loss at any rate up to the present time, is something like £13,000
and that has occurred over a period of some 1G years. It is not
likely that loss will be wiped out and a remuneration adequate to the
skill of the invention be received unless the term is extended for a
considerable time. This is not like an ordinary article which, when
once it is introduced to the public, the public wants generally to
possess and to purchase. This is much more like the sluice gates,
the sanitary sewage patents, and the electric signalling system
which have been referred to in the cases ; only, to my mind, the
present case justifies an extension more clearly than the facts did
in those cases. I have little doubt that as regards both these
Patents the case is an exceptional one within the meaning of sub-
section (5), and I think that the proper extension to grant in both
these cases is the full term of the ten years.”
In that case there being two Patents for which extension had
been asked, and the first Patent having expired prior to the date
of the judgment, the Court made a re-grant of that Patent for 10
years from the date of expiration on what were referred to as “the
usual terms”, that is to say the British Thomson- Houston terms. 13
In the case of the second Patent, that not having then expired, an
See (1929) 46. R. P. C. 367 at p. 3777 ~ ~ ~~~
520 THE LAW OF PATENTS IN INDIA [Ch. XIII
extension of that Patent was granted for 10 years from tho date
on which it would expire.
Prudence : necessity for foresight and separate accounts.
From what has already been said it is clear that it will make
a very great difference, at the time when a Petition for Extension
has to be prepared, whether or not the earlier accounts in relation
to the patent throughout its life have been properly, carefully, and
separately kept. For this reason it is advisable for a Patentee
from the outset to make a point of keeping carefully suoh separate
accounts in relation to every separate Patent. Even if he will not
eventually be the person who will be the Petitioner on a petition
for extension, yet it is apparent that everything he neglects to do
which would increase the chances of an assignee from him in
obtaining an extension, will tend to the devaluation of his Patent
should he desire to assign it. Ho will therefore be the more likely
to obtain a good price for his Patent in the event of an assignment,
if he can at that time hand over to the assignee such clear accounts
relating to the remuneration received by him up to the date of such
assignment, as will make it the easier for such assignee to obtain
in due time an extension if required.
Procedure in relation to the Petition.
Under the Indian Patents & Designs Rules 1933 provision is
made regulating the procedure relating to the filing and advertising
of tho Petition and to the filing of a notice of opposition by an
opponent and of such matters. Provision is also made regarding
the procedure relating to the forwarding of the Petition to H. E.
the Governor-General in Council by the Controller. Though the
wording of Section 15 of the Act of 1911 merely refers to a Patentee
“presenting a petition to the Governor-General in Council, and
though the wording of Rule 25 of the 1933 Rules does not appear
anywhere to state that the Petition will be filed in the first place
at the Patent Office to be forwarded eventually to H. E. the
Governor-General in Council, it is clear from various provisions
in Rule 25 that it is intended to direct that the Petition is to be
filed in the first place with the Controller.
Rule 25 which may for convenience be here noted is as
follows : —
“25. (1) A petition for the extension of the term of a patent
Ch. XIII]
PROCEDURE ON THE PETITION
521
shall set forth clearly the nature and merits of the invention in
relation to the public, the profits made by the patentee as such and
all the circumstances of the case.
(2) The Controller shall advertise every such petition in the
Gazette of India.
(3) Every such advertisement shall state the object of the
petition and the address within British India for service under
this rule. It shall also specify that notices of objections shall be
lodged on Form 6 within two months from the date of the noti-
fication.
(4) Every such petition shall also be advertised by tho
patentee, in not less than two newspapers named by the Controller,
within 14 days from the date of the notification in the Gazette and
in the manner described in sub-rule (3). Copies of the newspapers
containing these advertisements shall be supplied to the Controller.
(5) The petitioner shall, within three weeks of filing the
petition, lodge a duplicate of the petition with two copies of the
balance sheet of expenditure and receipts relating to the patent in
question, which accounts shall be proved on oath. He shall also,
upon receiving two days’ notice, give the Controller or any person
deputed by him for the purpose, reasonable facilities for inspecting
and taking extracts from the books of accounts, by reference to
which he proposes to verify the said balance sheet or from which the
materials for making up the said balance sheet have been derived.
(6) Any person desirous of opposing the prayer of the petition
shall lodge with the Controller a notice on Form 6 accompanied by
a fee of Rs. 5/-. Such person shall at the same time serve a copy
of such notice upon the petitioner. Such notices shall be lodged
and served within two months from the date of the notification of
the petition in the Gazette of India.
(7) The petitioner shall, within one week of the receipt of
such notice, serve a copy of his petition upon each person giving
such notice.
(8) Every i>erson giving such notice as aforesaid shall, within
14 days from the service of the petition upon him, serve upon the
petitioner one copy and lodge with the Controller two copies of
66
522 THE LAW OF PATENTS IN INDIA [Ch. Xffl
particulars of the objections upon which he intends to rely against
the granting of the prayer of the petition.
(9) Any person who shall not, within the Baid 14 days, lodge
and serve such particulars of objections as aforesaid shall be deemed
to have abundoned his opposition.
(10) No person who has delivered such particulars of objec-
tions shall be entitled to oppose the granting of the prayer of the
petition on any grounds not stated in such particulars.
(11) Any person who has delivered particulars of objections
shall be entitled at his own expense, to obtain copies of the accounts
which have been lodged by the petitioner.
(12) The Controller may excuse petitioners and opponents
from compliance with any of the requirements of sub-rules (5), (7), (8)
and (10) and may give such directions in matters of procedure and
practice as he shall consider to be just and expedient.
(13) Service of any document requiring service under this
rule may be made by enclosing such document in a prepaid registered
letter and posting such letter to the person required to be served
at his address for service.
(14) On completion of these proceedings, if any, or at such
other time as he may see fit, the Controller shall forward one copy
of the documents left by the party or parties to the Governor-
General in Council through the Secretary in the Department of
Industries and Labour.”
The two material forms for application for extension and for
opposition to extension are set out in the Second Schedule to the
Indian Patents & Designs Act of 1911 being Form No. 9 and Form
No. 6 respectively : which may for convenience be noted here : —
Form No. 9.
Petition for extension of term of Patent. Section 15.
In the matter of Patent No .......dated
and granted to
for an invention for
Ch. XOI]
NOTICE OF OPPOSITION
533
and
In the matter of Section 15 of the Indian Patents and Designs
Act, 1911.
To His Excellency the Governor-General in Council.
The humble petition of
Sheweth as follows : —
On the day of letters patent numbered
were granted to
for an invention for .
That the facts and matters stated herein are true to the best of
your petitioner’s knowledge, information and belief.
Your petitioner(s) therefore humbly prays that the said letters
patent may be extended for a further term of years, or for
such other term as the Governor-General in Council shall deem fit.
Dated this day of 19
(Signed)
Petitioner
“The note given in the official Patent Office Handbook in
regard to the matters which should be contained in the body of the
form after the words “for an invention for” is as follows : —
Note. (1) Here set forth (a) the circumstances under which
the petitioner obtained rights in the patent i (b) the history of the
art with special reference to the invention and subsequent improve-
ment ; (c) the special utility and advantages of the invention in
relation to the public ; (d) all information relating to foreign
patents ; (e) the rights of third parties, such as licenses, etc. ; (f) the
difficulties with which the patentee has had to contend in introduc-
ing into British India the manufacture according to his invention ;
(g) statement regarding the inadequacy of remuneration.
(2) The continuation of the petition should be upon paper of
the same size on one side only, with a margin of li inches on the
paper.”
524
THE LAW OF PATENTS IN INDIA
[Ch. XIII
Form No. 6.
Notice of opposition. Section 15, or Buies 25
(To be supplied in duplicate)
I (or we)
hereby give notice of my (or our) intention to oppose : —
Under Rule 25 the petition for extension of term of Patent No
The grounds of opposion are as follows : —
I (or we) declare that the facts and matters stated herein are
true to the best of my (or our) knowledge, information and belief.
My (or our) address for service in British India is as follows :
To
Dated this day of
(Signed)
The Controller of Patents and Designs
1, Council House Street, Calcutta.
19
The fee payable to the Patent Office for an application (on
Form No. 9) for extension is Rs. 50/-
The fee payable to the Patent Office for an opposition thereto
(on Form No. 6) is Rs. 5/-
There are no provisions in the Rules relating to the procedure
in disposing of the Petition after it has been forwarded to H. E.
the Governor-General in Council.
As already observed H. E. the Governor-General in Council
may decide to dispose of the Petition himself or refer it for decision
to a High Court. In the former case it may be assumed that any
directions as to the mode of hearing or disposal of the Petitioii will
require to be applied for through the Department of Industries &
Labour. In the latter case the matter will presumably be dealt with
by that High Court to whom it is referred, as a Motion, and under
the ordinary civil practice of that particular Court in hearing and
disposing of motions.
525
Ch. Xlll] PARTIES TO THE PETITION
Extension of Patent of Addition.
It has been held in England that the Court has power to extend
a Patent of Addition just as any ordinary Patent. 1 ®
Who may apply for an extension of a Patent.
From the terms of Sec. 15 it seems clear that no one but the
Patentee may apply for an extension. Thus it will not be open to a
licensee to make such an application. 17
Necessary Parties to the Petition.
It has been held in England that the original grantee of the
Patent is ordinarily required to be a party : but that this may be
dispensed with. Though that was a case under the Originating
Summons procedure under sub-section (6) of the English Act it is
submitted that as to parties, the principle will also apply to the
Petition procedure ; and that the same principle will be applicable in
British India. 18
Proof of inadequacy of remuneration.
It will be necessary to embody in the Petition or file with it as
a Schedule a comprehensive and full statement of accounts from
which the extent of the remuneration obtained and its inadequacy is
to appear. In this respect it will be important that the statement
of accounts shows the whole sequence of accounts throughout the
life of the patent and the sequence of the various amounts of remu-
neration obtained by the various persons who have been patentees
since the original grant. 19
If the Patent has expired before date when order for extension is to
be made.
It may happen that the Patent in respect of which extension
is asked for has expired before the disposal of the Petition. In such
a case the Court has power, under the section, to order a fresh
grant. But it should be noted that in such cases in the order for
such fresh grant there are usually imposed on the patentee certain
conditions similar to those embodied in the order in the case of
18 See In the matter of the Patents of Maschincnfabrik Augsbu rg -Number (f
A.-G. (1930) 47. R.P.C. 193 at p. 209.
17 For the definition of a Patentee see Sec. 2(12)4.
18 See Dressier 3 s Patents (1929) 46. R.P.C. 165.
10 See also the observations under the heading “Inadequacy of remunera-
tion : whose remuneration is the criterion ?” at page 514 above.
528
THE LAW OF PATENTS IN INDIA
[Ch.xm
British Thomson Houston (1929) 46. R. P. C. 367 which were
followed for example in the more recent case of In the matter of
Perry & Brotm’s Patents (1931) 48. R. P. C. 200 at p. 215. The
order in the British Thomson Houston case as to its material parts as
reported in the official report was as follows : —
“And the applicants by their Counsel undertaking to use their
best endeavours to procure the registration of such of the licences
granted under the above-mentioned Letters Patent as are applicable
to the new Letters Patent hereinafter ordered to be granted and of
any licences which may be granted under the said new Letters
Patent. This Court doth order that new Letters Patent in respect
of the matters comprised in the above-mentioned Letters Patent for
a term of two years from the expiry of the above-mentioned Letters
Patent No. 10918 of 1913 be granted to the Applicants subject to a
proviso that no action or other proceeding shall be commenced or
prosecuted and no damage shall be recovered (1) In respect of any
infringement of the said new Letters Patent which shall have taken
place after the expiry of the above-mentioned Letters Patent and
before the date of this Order (2) In respect of the use or employment
at any time after the date of this Order of any mechanism, machine,
machinery, process or operation actually made or carried on within
the United Kingdom or of the use, purchase or sale of any article
manufactured or made in infringement of the said new Letters
Patent after the expiry of the above-mentioned Letters Patent and
before the date of this Order provided that such use, purchase, sale
or employment is by the person or corporation by or for whom such
machine or machinery proocss or operation was bona fide made or
carried on or by his or her executors, administrators, successors or
vendees or his or their assigns respectively (3) In respect of the use,
employment or sale at any time after the date of this Order by any
person or corporation entitled for the time being under the preced-
ing paragraph to use or employ any machine, machinery, mechanism,
process or operation, of any improved or additional machine,
machinery, mechanism, process or operation, or of the use or sale of
any article manufactured or made by any of the means aforesaid in
infringement of the said new Letters Patent ; provided that the use
or employment of any such improvement or additional machine,
machinery, mechanism, process or operation shall be limited to the
buildings, works or premises existing at the time being or afterwards
Ch. xni]
REFERENCE TO A HIGH COURT
527
erected of the person or corporation by or for whom such machine,
machinery, mechanism, process or operation was made or carried on
within the meaning of the preceding paragraph his or their executors,
administrators, successors or assigns”.
See also In the Matter of Horstmann, Horstmann and Edgar’s
Patent (1929) 46. R. P. C. 1 : the latter was a case where the
application was made under the Originating Summons procedure
peculiar to England but on this point it is submitted the case will
be applicable. In this case various conditions were imposed on the
patentee on the basis that the patent having expired was required to
be restored and, as it was thus being restored, all conditions usual in
a case of restoration were to be imposed.
It may be noted that in England the position where a patent
had expired and there was a re-grant (or restoration) was at the date
of the last-mentioned case regulated by Rule 62 of the English Rules
of 1920 which corresponds verbatim to Rule 65 of the present
English Rules of 1932 and which corresponds to some extent but
only partially to Rule 28 of the Indian Rules of 1933.
Procedure at the hearing in a High Court of a Petition for exten-
sion referred by H. -E. the Governor-General in Council
under Section 15(3).
It has been held in the recent case already cited, in the Bombay
High Court, that the ordinary rules of procedure followed by the
High Court, devoid of its technicalities, will be adopted on the
hearing of a Petition for extension of the term of a Patent. See the
judgment of Kania J. in The Indian Casablancas High Draft Coy.
v. The Millowners’ Association of Ahmedabad during the course of
which the learned judge observed as follows 20 : —
“This is the first case which has been referred to this Court
under the Act and under the circumstances there is obviously no
precedent on the point. The reason for referring the petition to the
High Court appears to be that the matter involves taking of
evidence and determination of questions of fact and whieh requires
a judicial decision. Section 15(4) of the Act provides that if the
petition be referred to the High Court the patentee and the objectors
shall be made parties to the proceeding and the Controller shall be
20
(1935) 59. Bom. 564 at p. 568.
528
THE LAW OF PATENTS IN INDIA
[Ch. xin
entitled to appear and be heard. It, therefore, appears that on a
reference to the High Court by the Governor-General in Council the
matter ceases to be merely administrative and becomes a judicial
proceeding ; the parties to the proceeding being the patentee on the
one hand and the objectors on the other and the Controller has also
the right of audience. In the High Court Rules no procedure is
separately prescribed for the hearing of such a petition, and, in the
absence of such provision, I think, the ordinary rules of procedure
followed by the High Court, devoid of its technicalities, should be
adopted so far as the same are applicable to the particular case.”...
The Court adjudicates on the same Petition.
It has been held that when a case is referred to the High Court
for decision under Section 15(3), it is not necessary for a fresh
Petition or fresh pleadings by the Objectors to be filed, but that the
Court may adjudicate upon the same Petition originally submitted
to H. E. the Governor-General in Council. See the observations of
Kania J. in the case above cited.
Amendment of grounds of objection.
It was held in the same case that the Objectors might add to
the objections submitted to H. E. the Governor-General in Council
by way of amendment of those objections preliminary to the hearing
in the High Court ; and in effect that in the High Court the matter
was governed by the ordinary law relating to the amendment of
pleadings.
Appeal.
The Section (Section 15) does not expressly create or mention
any right of appeal. In cases which are disposed of by H. E. the
Governor-General in Council there will be no appeal from his
decision. In cases which are referred by H. E. the Governor-General
in Council to a High Court for decision an appeal will lie, it is sub-
mitted, under the Civil Procedure Code to the appropriate Appellate
Bench of such High Court. 21
3 1 In England under the present Act (1907-1932) a decision by the special
Judge, being “such Judge of the High Court as the Lord Chancellor may select
for the purpose”, is not appealable : in view of the express provisions of Section
92 (2) of English Acts 1907-1932. See also Terrell p. 293 and the case there
cited.
cb. xni]
PROCEEDINGS FOR RESTORATION
PART II
RESTORATION OF A LAPSED PATENT
Previous remedy available.
Originally the only procedure available in England for the
restoration of a lapsed Patent was to obtain a Private Act of
Parliament. 22
The statutory remedy now available in British India.
The current Indian Act of 1911 now contains express provision
for the restoration in certain circumstances of a Patent which has
lapsed owing to the non-payment of fees. These provisions are
contained in Section 16 which is as follows : —
“16(1) Where any patent has ceased owing to the failure of
the patentee to pay any prescribed fee within the prescribed time,
the patentee may apply to the Controller in the prescribed manner
for an order for the restoration of the patent.
(2) Every such application shall contain a statement of the
circumstances which have led to the omission of the payment of the
prescribed fee.
(3) If it appears from such statement that the omission was
unintentional or unavoidable and that no undue delay has occurred
in the making of the application, the Controller shall advertise the
application in the prescribed manner, and within such time as may
be prescribed any person may give notice of opposition at the Patent
Office.
(4) Where such notice is given the Controller shall notify the
applicant thereof.
(5) After the expiration of the prescribed period the
Controller shall hear the case and subject to an appeal to the
Governor-General in Council, issue an order either restoring the
patent subject to any conditions and restrictions deemed to be
advisable or dismissing the application.
Provided that in every order under this section restoring a
patent such provisions as may be prescribed shall be inserted for
*• See Rotner, Practice before the Comptroller of Patent t (1911 edit.) p. 102. .
67
590 THE LAW OF PATENTS IN INDIA [Ch. XIII
the protection of persona who may have availed themselves of the
subject-matter of the Patent after the patent had ceased.”
The matter, together with the procedure to be followed as to
advertisement and notice of opposition, is also regulated by Rules
26 to 28 of the 1933 Rules which are as follows : —
“26. If the Controller entertains an application under Sec-
tion 16 of the Act for the restoration of a lapsed patent, he shall
advertise it in the Gazette of India.”
“27. Notice of opposition to the restoration may be given
within six weeks of the advertisement, and the procedure for the
disposal of such opposition shall be regulated by the provisions of
rules 20, 21 and 22.”
“28. In every order restoring a lapsed patent, it shall be
provided that the continuance of the patent shall be subject to any
directions given by the Controller in respect of any application by
any person who availed himself of the subject matter of the patent
any time during the period from the date of the lapsing of the patent
to the date of the order of restoration.”
The tribunal.
The tribunal before whom the application is made and by
whom it is decided is the Controller.
The grounds.
The grounds necessary to be established sufficiently appear
for practical purposes from the section itself : the omission must
have been “unintentional or unavoidable”.
The relief.
The Controller after hearing the application may either make
an order dismissing the application or an order for restoration
subject to the conditions prescribed under Rule 28 of the Indian
1933 Rules : or he may make such an order for restoration but
subject to such further conditions and restrictions deemed by him to
be advisable.
The provisions for the protection of persons who may have
availed themselves of the subject matter of the patent after the
patent had ceased which are referred to under sub-section (5) of
Section 16 of the Indian Act and whioh are thereby made obligatory
Ch. xin]
GROUNDS FOR RESTORATION
531
in every case where an order for restoration is made can only mean
those which are contained in Rule 28 of the Indian 1933 Rules. But
when this Rule 28 is looked at, it will be seen that nothing specific
is laid down beyond “any directions given by the Controller” in
respect of any application by any person who availed himself of the
subject matter of the patent at any time during the period from the
date of the lapsing of the patent to the date of the order of restora-
tions. Thus it follows that in a case where there is no application
by such a person as is mentioned, no directions would be given by
the Controller such as would be made obligatory to be embodied
in an order for restoration by reason of Section 16(5) ; and even in
cases where an application by such a person has been made, if the
Controller should happen on such application to see fit to give no
directions, then, also, nothing would be obligatory to bo embodied
in the order for restoration. Thus the effect of the Indian Section
16(5) is that nothing need be embodied compulsorily, in the order
of restoration except those directions referred to above, if any.
In this respect it is to be noted that the Indian provisions differ
from the English provisions, which arc contained in Section 20 of
the English Patents & Designs Acts 1907-1932 and the English
Patents Rules 1932, Nos. 61 to 66 and in particular Rule 65 thereof:
as a result of which certain provisions for the protection of persons
who may have availed themselves of the subject matter of the Patent
after the Patent has been announced as void in the Journal, must
in every case in which an order for restoration is made be inserted
in such order : that is to say whether or not there has actually been
any separate application by any one of such class of persons and
whether or not the Controller has given any directions on any such
separate application.
Unintentional or unavoidable : undue delay.
Restoration under the Indian Act may be asked for if the non-
payment of the fee was either unintentional or unavoidable. 23
As to the effect of the word “unintentional”, if the non-pay-
ment of the fee is intentional, and assuming that it was not possible
to ‘show that it was unavoidable, then no matter what were the
reasons of the Patentee, the Controller will not have power to order
** The corresponding section of the .English Statute does not contain the
words “or unavoidable”.
532
THE LAW OF PATENTS IN INDIA
[Ch. XUJ
restoration. See the decision of the Comptroller in the Ruth Aldos
Company (Inc.) case 84 which was confirmed by Luxmoore J. on
appeal. In the course of that decision the Comptroller made the
following observations : —
“In interpreting Section 20, one must bear in mind the decision
given by the late Lord Parker (then Mr. Justice Parker) in tho
matter of Land’s Patent (1910) (27 R.P.C. page 481). In that case,
in which the application for (an) Order for restoration was refused.
Mr. Justice Parker said, (page 483, line 33) “It is quite clear that
the omission of the payment of the fee is the omission which is
referred to in sub-section 3, and the Section only applies if the
omission to pay the fee was unintentional. In order that an omis-
sion to pay a fee should be intentional, it is only necessary that it
should be present to the mind of the person who has to pay the fee,
that the fee is payable and that he should deliberately elect not to
pay it. His reasons for that election are it appears to me absolutely
immaterial. In the present case the Petitioner knew that a certain
fee was payable, and under circumstances which he explains in his
Declaration, he did deliberately elect not to pay. His reasons for
making that election he also gives, and it appears he was under an
erroneous notion as to the law. He thought that having applied
for Letters Patent for an improvement in the machine protected
by the original Letters Patent and having paid the fee in respect
of such application, it was not necessary for him to protect or keep
up in any way, the original Patent. He thought that he could rely
upon the Patent for the improvement as protecting the original
Patent and in that erroneous belief, he deliberately elected not to
pay the fee. If I were to say that that omission to pay the fee was
unintentional within the meaning of this Section, it is difficult to
say where one could possibly dra w the line in giving the relief for
which the Section provides, for in every case, if a man deliberately
elected not to pay the fee, I should have to consider what his reasons
were, and if his reasons were bad, in other words, if he were a man
of no common sense, I might have to give relief, whereas, if he was
a man of common sense, I might have to refuse relief. The truth
is that the Section only provides for one of a series of cases in
which, prior to the passing of this Act, Parliament used to give
14 (1933) 50. R.P.C. 409.
ch. xm]
UNINTENTIONAL’' NON-PAYMENT OF FEES
533
relief to patentees, that is the narrow case of unintentionally omit-
ting to pay the fee. It does not provide for the case where the
man deliberately elects not to pay the fee under an erroneous sup-
position, which influences his conduct, and with which, under this
Section, it appears to me, the Court has nothing to do. I do not
therefore see my way to interfere with the deoision of the Comp-
troller.”
Applying that decision to this case, it is quite clear that the
Patentees intended not to pay the fee on Patent No. 282,791. I
accept their statement that it was never their intention that the
Patent of Addition No. 309,099 should be allowed to lapse, but
while I have the greatest sympathy with them in their difficulty,
I am unable to agree that I have any power to restore the Patent
of Addition by itself. It is quite dear that I cannot restore Patent
No. 282,791, since on their own showing, the omission to pay, the
fee in that case was clearly intentional. The consequence of that
omission, namely the expiration of the Patent of Addition, was not
contemplated by them, but this is exactly the position which
occurred in Land’s case. In that case the Patentee never intended
to allow his monopoly to lapse, but clearly intended not to pay tho
fee on the Patent in question.
Mr. Dunlop suggested, that, as it was not possible to restore
the Patent of Addition without the original Patent, I should restore
the original Patent which would have the effect of restoring the
Patent of Addition, and subsequently the Patentees should make an
offer to surrender the Patent under the provisions of Section 26(3) ;
that 1 should then make an Order revoking the original Patent, and
convert the Patent of Addition into an independent Patent under
the proviso to Section 19(4). While this is an ingenious suggestion,
it does not dispose of my difficulty in having to come to a conclusion
that the omission to pay the fee on the original Patent was unin-
tentional, and it is essential that I should be so satisfied before I can
exercise any discretion in restoring the Patent under Section 20. I
am bound, therefore, to dismiss this application on the ground that
I am not satisfied that the omission to pay the fee on Patent No.
282,791 was unintentional, and I order that the application be
dismissed accordingly.”
It appears that the alternative ground that the omission to
534
THE LAW OF PATENTS IN INDIA
[Ch. XIII
pay the renewal fee was “unavoidable” is a ground peculiar to the
Indian Act and not available in the United Kingdom under the
corresponding section (i. e Section 20 (3) ) of the English Acts 1907-
1932. There do not appear to have been any reported cases as to
what amounts to avoidability.
For a case in which restoration was refused for undue delay
in making the application for restoration, see ReihVs Patent 25 .
Appeal.
Under Section 16(5) there is an express right of appeal from
any order by the Controller (that is whether for restoration or for
refusal of restoration or for restoration on conditions) to H. E the
Governor-General in Council.
Practice under the Indian Act and Rules.
The provisions regarding applications for restoration are
contained in Section 20 of the English Patents & Designs Acts
1907-1933 and the Rules 61 to 66 of the English Patent Rules of
1932. Such provisions are more detailed than the Indian provi-
sions. But it may be assumed that the Controller in India does in
practice follow the English practice even though not bound to do
so, since there is nothing in any of the provisions in the Indian Act
or Rules repugnant to his doing so ; and since the English Rules
where they differ may be treated merely as additional in regard
to matters of detail not provided for by the Indian Rules. The two
systems differ also in regard to the provision for appeals : the appeal
allowed from the decision of the Comptroller being in England to
the Court. Apart from these differences the provisions in both
systems of law are in general to the same effect.
35 (1922) 39. R. F. C. Appendix p. iii.
CHAPTER XIV
INFRINGEMENT— WHAT CONSTITUTES INFRINGEMENT-
DEFENCES IN RELATION TO THE GRANT-
DEFENCES OF DENIAL OF THE ACT
ALLEGED— DEFENCES IN RELATION
TO THE SPECIFICATION— LORD
MOULTON’S DEFENCE
The Royal Command comprising the prohibition.
It has been seen that in the form in use in the United Kingdom
the Letters Patent themselves contain the royal command to all
subjects of the Crown, other than the Patentee himself, forbidding
them from dealing in certain ways with the invention. It is in
truth by this prohibition to others, alone, that the monopoly is
effectively granted to the Patentee. The material words of such
prohibition are : —
“Know ye, therefore that we of our especial grace, certain
knowledge, and mere motion do by these presents, for us, our heirs
and successors, give and grant unto the said patentee our especial
license, full power, sole privilege, and authority, that the said
patentee by himself, hi9 agents, or licensees, and no others, may at
all times hereafter during the term of years herein mentioned, make,
use, exercise, and vend the said invention within our United King-
dom of Great Britain and Ireland, and Isle of Man, in suoh a
manner as to him or them may seem meet, and that the said patentee
shall have and enjoy the whole profit and advantage from time to
time accruing by reason of the said invention during the term of
sixteen years from the date hereunder written of these presents :
And to the end that the said patentee may have and enjoy the sole
use and exercise and the full benefit of the said invention. We do
by these presents for us, our heirs and successors, strictly command
all our subjects whatsoever within our United Kingdom of Great
Britain and Ireland and the Isle of Man, that they do not at any
time during the continuance of the said term of sixteen years
536
THE LAW OF PATENTS IN INDIA
[Ch. XTV
either directly or indirectly make use of or put in practice the said
invention, or any part of the same, nor in anywise imitate the same,
nor make or cause to be made any addition thereto or subtraction
therefrom, whereby to pretend themselves the inventors thereof,
without the consent license or agreement of the said patentee in
writing under his hand and seal, on pain of incurring such penalties
as may be justly inflicted on such offenders for their contempt of
this our Royal command, and of being answerable to the patentee
according to law for his damages thereby occasioned/’
The words of the form of grant of patent in use in India
which are material for the present purpose are : —
“The Governor-General in Council is pleased to order by these
presents that the above said petitioner shall, subject to the
provisions of the Indian Patents & Designs Act of 1911, as patentee
have the exclusive privilege of making, selling and using the inven-
tion throughout British India (including British Baluchistan, the
Santhal Parganas and the Shan States) and of authorising others so
to do for the term of sixteen years ”
The Indian form of grant (though it may be a matter for some
regret that it is less direct in its wording without any other apparent
advantages) must be taken to carry with it a similar command
on persons other than the patentee not to make, sell or use the
invention throughout the territory and for the period stated.
• \
Any person disobeying the royal command comprising this
prohibition commits an infringement of the Patent.
Such infringement, though in truth a disobedience of the royal
command and a breach of the royal prerogative, is not, and has
never been, treated as a crime : and since the matter is one which
especially and directly concerns the Patentee and no one else, the
taking of redress is left to the Patentee and no one else. Even
he is not entitled to proceed criminally against the infringer i but
only by civil suit. The right of bringing a civil suit is expressly
given to him under the Indian Patents & Designs Act of 1911
[under Sec. 29(1) ]. It has not been made open to anyone but the
Patentee himself to take steps for the breaoh of the royal command,
that is the infringement, either by criminal proceedings or by oivil
suit.
Ch. XIV]
WHAT CONSTITUTES INFRINGEMENT
537
It may be of interest to note that the counterfeiting of trade
marks and certain matters related thereto are treated as crimes
under the Indian Penal Code ; for which reference may be made to
Sections 478 to 489 thereof and to the Merchandise Marks Act
(Act IV of 1889). Also certain matters relating to the use of false
descriptions of goods, which cover among other things false trade-
marks, false statements of the country of origin and so on, are made
offences under the Merchandise Marks Act and the Sea Customs
Act of 1878 (as amended). For corresponding provisions in the
criminal law of England reference may be made to the English
Merchandise Marks Act of 1887 (50 & 51 Viet. Ch. 28). Such
crimes are made punishable by fine or imprisonment or both. But
infringement of patent is in no case treated in India as a crime.
The present chapter is concerned therefore only with the civil right
to sue possessed by the patentee.
What constitutes infringement.
Infringement is the act, or acts (somewhat analogous to tres-
pass) in respect of which the Patentee is thus givon a statutory right
to bring a suit against the infringer. The Patentee possesses no
right at Common Law or apart from the Act of 1911 to sue for
infringement. The act itself also does not use the term infringement
in conferring on him this right of suit nor does it contain any
definition of the term. But by Section 29 of the Indian Patents &
Designs Act of 1911 the Patentee is given the right to bring a suit
in certain circumstances which are there stated. The Patentee’s
right in British India to sue for infringement of his Patent is
derived from this section and this section only. Accordingly only
such acts as fall within that section amount to an infringement ; and
anything outside that section is not an infringement.
Under Section 29(1) of the Act of 1911 it is provided as
follows : —
“A patentee may institute a suit in a District Court having
jurisdiction to try the suit against any person who, during the conti-
nuance of a patent acquired by him under this Act in respect of an
invention, makes, sells or uses the invention without his license, or
counterfeits it, or imitates it.”
The material words for the present purpose are “makes, sells or
uses the invention”.
68
538
THE LAW OF PATENTS IN INDIA
[Ch. XIV
Three main classes of defence to a claim of alleged infringement.
As soon as the point is brought up whether any particular
act is an act done by such specific person, -at such time, in such
place, and in such manner, as to amount to an infringement for
which another specific person will be entitled to sue, this opens up
the possibility of three quite distinct lines of defence. First there
is the class of defence that the act alleged to have been done was
not an act, the doing of which, at the place or at the time or in the
manner alleged, amounts to any infringement in relation to the
terms of the grant of the Patent. Then there is the second class of
defence which is comprised in a denial that the alleged act, which
is complained of as being the infringement, was in fact committed.
Then there is the third class of defence that the act was not an act
of such a nature in relation to the description of the patented inven-
tion in the Specification itself, as to amount to any infringement.
In regard to defences raised only in relation to the terms of
the grant it is clear that such defences will succeed or fail irrespec-
tively, entirely, of any similarity or dissimilarity between the
Patented invention and the article or act alleged to be an infringe-
ment of it ; and in such a defence (in relation to the terms of the
grant) questions of the construction of the Specification as to the
nature or ambit of the invention patented will be entirely immaterial
and irrelevant, and need not at all be gone into. It is immaterial
also whether the alleged act complained of as being an infringement
was committed or not. In that class are also included defences
that the Defendant is a person in particular, who is, for one special
reason or another, relieved from liability in relation to the grant.
Also the defences that the Plaintiff in particular is not entitled to
sue for infringement at all.
The secon 1 class of defcuce, that of a denial that the act com-
plained of as being an infringement was committed, stands by itself.
Obviously if such a defence is established no question either of the
terms of the grant or of the contents of the specification need
arise.
On the other hand in regard to a defence of the third olass,
in which the Defendant relies on his article or process being different
from the patented article or process, such a defence is raised directly
in relation to the Specification itself ; and the success or failure
Cb. XIV]
VARIOUS DEFENCES
539
of suoh a defence is dependent largely on tho manner in which the
Specification is properly to be construed. In such cases questions
regarding the proper construction of the Specification may be not
only relevant but vital. For this defence the terms of the grant
are immaterial ; it is also immaterial whether the act alleged and
complained of as being an infringement was committed or not.
There is also a subsidiary fourth class of defence commonly
known as Lord Moulton’s defence to which reference is made
hereafter.
By considering what does not amount to infringement for one
reason or another, this will be the most convenient way of analysing
what constitutes an infringement.
Various specific defences available against a claim for infringe-
ment.
The following are the defences which may be available accord-
ing to the circumstances of the particular case, for a Defendant
against a claim for infringement of Patent.
I. DEFENCES IN RELATION TO THE GRANT
(N. B. The contents of the Specification are immaterial. It is also
immaterial whether the alleged act , complained of as being the infringement,
was in fact done or not.)
(N. B. It may be possible in some cases to raise these defences as a
preliminary point either on the pleadings or without calling oral evidence.)
Patent not in force at the date of the alleged act complained of as
being the infringement.
1. No grant has been made at all : or early enough so as to
have been in force prior to (or on) the date of the
alleged infringement.
2. That the alleged act complained of as being the infringe-
ment was done before the date of the advertisement of
the acceptance by the Patent Office of the application
for the Patent. (See Sec. 11).
N. B. This is a defence against a claim for damages but no
defence against a claim for injunction.
3. The Patent had expired prior to the date of the alleged
infringement.
540
THE LAW OF PATENTS IN INDIA [Ch. XIV
4. The Patent had lapsed for non-payment of renewal fees
prior to that date.
5. The Patent had been revoked prior to the date.
6. The Patent had been surrendered under Section 24 prior
to that date.
7. The Patent though not revoked had boon declared invalid
prior to that date.
8. The Patent is a Patent of addition to a Patent which had
lapsed owing to non-payment of renewal fees or had
been revoked prior to the date of the alleged infringe-
ment and had not been converted to an independent
Patent under Section 15A (2).
9. Where the Patent has been extended, that the alleged act
complained of took place after expiry of the original
Patent and before the grant of the extension or of the
sealing of a new Patent.
10. Where the Patent has been revived under Section 14(2)
by an enlargement of the prescribed time for payment
of renewal fees, that the act complained of as being an
infringement was done after a failure to pay renewal
fees within the prescribed time and before any enlarge-
ment thereof : under Section 14(3).
N. B. This is a discretionary defence against a claim for
damages only.
11. Where the Patent has lapsed through unintentional or
unavoidable non-payment of renewal fees and has been
subsequently restored, that the alleged act complained
of as being the infringement took place after the date
of the lapse of the Patent and before a date twelve
months after the date of the restoration order : under
Rule 28 as amended by an amendment of 1935.
Patent in force at the date of the alleged infringement but not so
as to be affected by the act complained of.
12. The alleged act complained of as being an infringement
was done outside the locality covered by the grant : being
Ch. XIV] DEFENCES IN RELATION TO THE GRANT
541
done outside the territory of British India and British
Baluchistan and the SanthalParganas and the Shan States. 1
13. (The same) : being done in a foreign ship or aircraft within
Section 42.
14. The alleged act complained of as being an infringement
was done in a manner such as not to constitute an
infringement in relation to the grant : not being such a
dealing with the invention as to amount to a “making”
“selling" or “using" thereof such as to constitute an
infringement.
Defendant is a person in particular relieved from liability .
15. The defendant at the time of the alleged infringement had
a license (express or implied) from the Patentee.
N. B . Where there are Joint Patentees it may be that a
license given by one only without the express authority
of the other Joint Patentee or Patentees will not be
effective.
16. (The same) : in particular when acting on directions
given by the Patentee.
17. The Defendant at the time of the alleged infringement
was a Joint Patentee with the Plaintiff.
18. The Defendant at the time of the alleged infringement
was the Agent of the Patentee.
19. The Defendant at the time of the alleged infringement
was the agent of a Joint Patentee with the Plaintiff.
20. The defendant acted as an innocent infringer only, not
being aware of Plaintiff's Patent, and had no reasonable
means of making himself aware thereof. 2 *
A 7 . B. This is a defence against a claim for damages only ;
and not necessarily a defence against a claim for an injunction.
21. That the Patent has been granted on certain conditions or
has been extended or restored on conditions, and that the
Defendant is within the conditions [See Section 16(5)].
1 See page 31 above.
9 See Section 30. Such a case may arise in particular where patented goods
were not properly marked.
542 THE LAW OF PATENTS IN INDIA [Ch. XIV
N. B. There is no defence available in India that the Patent
has been endorsed "licenses of right" and the Defendant is willing to
take a license.
22. In a case where the defendant is the Government and
the Patentee isa government servant, that the defendant
is relieved from liability by virtue of particular
conditions on which the grant was made (see Funda-
mental Rule 48A and the General Instructions there-
under and see page 349 above).
23. In a case where the defendant is the Government (or
an officer or authority administering any department
of the services of His Majesty, or his agent, or his
contractor or some other person authorised in writing
by him) no matter whether the Patentee is a government
servant or not, that the particular circumstances of the
alleged infringing act are such that the defendant is
relieved from liability under the provisions of Section
21 of the Indian Patents & Designs Act of 1911.
Plaintiff is a person in particular not entitled to sue for infringement
at all.
24. The Plaintiff was not the registered Patentee at the date
of institution of the suit. [See Sec. 29(1) & Sec. 2(12)].
25. The Plaintiff though the registered Patentee at the date
of the institution of the suit, was not the person entitled
to the benefit of the Patent at the date of the alleged
act complained of as being the infringement.
26. There has been no valid assignment of the Patent to the
Plaintiff prior to suit though the Plaintiff is suing as
Assignee.
II. DEFENCE OF DENIAL (OR NON-ADMISSION )
THAT THE ALLEGED ACT COMPLAINED OF
AS BEING THE INFRINGEMENT WAS
COMMITTED
27. At all.
28. By the Defendant : or by his agent : or by any person for
whose act the Defendant will be liable.
Ch. XIV]
DEFENCES ON THE SPECIFICATION
543
(N. B . The terms of the grant are immaterial . The contents of the
Specification are also immaterial. Oral evidence will ordinarily he required.)
(N. B. As to a defence of denial that there was in fact any infringe-
ment because the alleged act was not committed at the material time , place ,
or manner in relation to the grant } see defences in relation to the grant :
previous headings unde>' “ Patent not in force so as to be affected by the
act complained of.)
(N. B . As to a defence of a denial that there was in fact any infringe-
ment because the Defendants article or process was not within the Plaintiff's
monopoly , see defences in relation to the Specification : later headings under
il Defendants Article or Process which is alleged to be an infringement is not
within the Plaintiffs monopoly' 7 .)
III. DEFENCES IN RELATION TO THE
SPECIFICATION
(N. B. The terms of the grant are immaterial. It is also immaterial
whether the alleged act complained of as being an infringement was in fact
done or not.)
Plaintiffs Patent is invalid .
29. Plaintiff's Patent is invalid for want of subject matter
since it does not comprise a manner of manufacture.
(See Chapter VI.)
30. Plaintiff's Patent is invalid for want of subject matter : 3
since there was in the alleged invention no inventive step.
(See Chapter VI.)
N. B. It appears that no defence is open to a Defendant in an
infringement suit on the ground that the Plaintiff's Patent is invalid
for want of subject matter in that the use of the invention will be
contrary to law. (See Chapter VI and see page 166). Or con-
* The view was definitely stated in the case of Sundara Rajan v. Kuppmarni
Iyer (1914) 27. Mad. L. J. 573, that no defence of want of subject matter at all
apart from want of novelty was available under the Indian Act. Though it was
held that the matter in that case was governed by the 18S8 Act, yet it was also
definitely stated that this view of the law would also apply under the later Act
of 1911, which had by then been passed but was held not to govern that case.
This view has however never been followed in any subsequent case and, it is
respectfully submitted is not good law.
614
THE LAW OF PATENTS IN INDIA
[Ch. XIV
trary to morality. Nor on the ground that the use of the invention
will be unfit for the exercise of the Crown’s prerogative. (See
page 166.)
31. Plaintiff’s Patent is invalid for want of novelty by anti-
cipation as common knowledge. (See Chapter VI, Part
IIIA.)
32. Plaintiff’s Patent is invalid for want of novelty by anticipa-
tion as public knowledge (whether by oral publication or
documentary publication or by publication by prior user).
(See Chapter VI, Part IIIA.)
33. Plaintiff’s Patent is invalid by reason of a prior grant
(See Chapter VI, Part 1 1 IB and at p. 218).
34. Plaintiff’s Patent is invalid for want of utility. (See
Chapter VI, Part IV.)
35. Plaintiff’s Patent is invalid for insufficiency of definition
in the Specification of the ambit of the invention (See
Chapter VII, Part I).
36. Plaintiff’s Patent is invalid for insufficiency of description
in the Specification of the nature of the invention and of
the directions for the manner in which it is to be perfor-
med. (See Chapter VII, Part I.)
37. Plaintiff’s Patent is invalid for insufficiency of description,
in the Specification of the best means known to the Appli-
cant for performing the invention.
N. B. Under Section 26(l)(g) it must be shown that such
insufficiency is fraudulent or injurious to the public.
38. Plaintiff’s Patent is invalid on the ground that the Appli-
cant for Patent was not the true and first inventor. (See
Chapter VII, Part II.)
39. Plaintiff’s Patent is invalid on the ground that the appli-
cation was made fraudulently. (See Chapter VII, Part
III and see at page 266.)
N. B. There is no defence available to a Defendant in an
infringement suit in India of “obtaining” simpliciter. See pages 263
and 267.
Ch. XIV]
LORD MOULTON’S DEFENCE
545
40. Plaintiff's Patent is invalid for abase of the monopoly after
grant by non -supply in British India or non-manufacture
in British India (Sec Chapter VIII and see page 333).
A r . B. This defence is only effective when four years or more
have elapsed after the date of the Potent.
Defendant’# article or process which is alleged to he an infringe-
ment is not within the Plantiff’s monopoly .
41. The alleged infringement is not covered by the claims of
the Plaintiff’s Specification.
42. The Patent has been amended since the date of the alleged
infringement and the alleged infringement was not covered
by the claims in the unamended specification.
43. The alleged act complained of as being an infringement
was done in circumstances such as not to create any
actionable claim for damages for infringement, since the
Patent has been amended since the date of the alleged
infringement (unless Patentee establishes that his original
claim was framed in good faith and with reasonable skill
and knowledge). (See Section 19.)
IV. LORD MOULTON’S DEFENCE
(N. B. The terms of the grant are immaterial. It is immaterial
whether the alleged act , complained of as being an infringement , was in fact
done or not. The contents of the Specification also become immaterial ;
since this defence amounts to an alternative plea in relation to the Sped -
fication, that, either , if the alleged infringing article or process is within the
ambit of the Plaintiff's claims , then the Plaintiff's Patent is invalid for want
of novelty, or, if outside the ambit , then there is in fact no infringement . But
evidence will be required .)
44. Defendant’s article or process which is complained of as
being an infringement is not novel. Soe Gillette Safety
Razor Co. v. Anglo-American Trading Co.*
4 (1913) 30. R.P.C. 4G5 H. L. at p. 480. Also Cincinnati Grinders {Inc.) v.
B. S. A. Tools Ltd, (1931) 48. R.P.C. 33 at page 58. Of. Hocking v. Hocking (1880)
3. R.P.C. 291 and l*roctor v. Bennis (1887) 4. R. P. C. 333 at page 351.
69
546
THE LAW OF PATENTS IN INDIA
[Ch. XIV
The above-mentioned defences are briefly noted here in one
place, for convenience of reference. It is proposed to deal farther
with those defences relating to the grant and to the denial of facts
(i.e. the first and second class of defence) in Chapter XV ; and to
deal further with those defences relating to the Specification and
with the defence commonly known as Lord Moulton’s defence
(i.e. the third and fourth class of defence) in Chapter XVI.
CHAPTER XV
INFRINGEMENT CONTINUED— DEFENCES IN RELATION
TO THE GRANT— DEFENCE OF DENIAL THAT THE
ACT COMPLAINED OF AS BEING AN
INFRINGEMENT WAS DONE
No specific mention of these defences in the Act of 1911.
• The defences which may prevail in a suit for infringement are
nowhere exhaustively mentioned in the Indian Patents & Designs
Act of 1911. Under Section 29(2) of the Act it is provided that
“every ground on which a Patent may be revoked under this Act
shall be available by way of defence to a suit for infringement
Thus every ground upon which it can be claimed that a patent is
invalid may be used as an answer to a claim of infringement : also
the grounds upon which it can be claimed that, though the patent is
not ipso facto invalid, yet it ought to be revoked — such as the
ground that the demand for the patented article in British India is
not being met to an adequate extent or the ground of manufacture
outside British India. But this does not mean that such grounds
are the only defences available. There are certain other complete
defences to a claim of infringement, which are not grounds of
revocation at all. These defences are nowhere specifically referred
to in the Act of 1911.
It will be observed that of the 44 various defences briefly men-
tioned in the preceding chapter, the defences noted under the
numbers 1 to 28, which are now being considered in the present
chapter, (as well as those under numbers 41 to 44 to be considered
later) have nothing to do with Section 29(2) of the Act.
Time of the alleged infringement in relation to the grant.
It is obvious that as the monopoly of the Patentee only extends
from the date when his Patent first comes into force up to the deter-
mination of his Patent, there can be no infringement except during
the currency of the Patent said to be infringed. If the act com-
plained of as being an infringement was done either before or after
548
THE LAW OF PATENTS IN INDIA
[Ch. XV
the period during which the grant was current there will clearly be
no infringement. Defences referred to as Nos. 1 & 2 in chapter XIV
arise when there has been no grant at all, ever, or when the act com-
plained of took place before the grant of the Patent ; and defences
Nos. 3 to 8 arise when the act in question took place after the deter-
mination of the Patent. Defences Nos. 9 to 11 arise when the act
complained of took place during some intermediate period during
which, for particular reasons, the Patent will not have been effective
and enforceable.
No grant of Patent at all.
Prom the fact that a grant of Patent if made will relate back
so as to be operative from the date of the application for the Patent,
it follows that it will ordinarily bo unsafe for a person other than the
Patentee to manufacture or sell or use the patented article or process
even before the actual grant of the Patent at any time after the date
of the advertisement of the application for the Patent. In certain
circumstances however enquiry at an early date may show that it has
already become impossible for any grant to materialise. If the appli-
cation for Patent has been refused. If the application has been
finally abandoned (before acceptance or before scaling). If on the
application being heard, the grant of a Patent has been finally refused.
If no sealing fee has been paid within the prescribed time.
Time of immunity before a Patent becomes enforceable : period
between date of application and date of advertisement of accep-
tance of the Specification.
It is true that after a Patentee has obtained the grant of a
Patent, such grant and the term of the Patent and of his monopoly
date not from the grant but from the date of his application ;
renewal fees in respect of the Patent being payable from the date of
the application. This is expressly provided in the first part of
Section 11 of the Indian Patents & Designs Act of 1911 : which is to
the effect that : —
“Except as otherwise expressly provided by this Act, a Patent
shall be dated and sealed as of the date of the applica-
tion.” ,
(See also the schedule to the act regulating the fees payable,
under which the years for purposes of renewal fees are reckoned
Ch. XV]
DEFENCES IN RELATION TO THE GRANT
549
from the date of the Patcnt-that is to say from the date of the
application.) But it is expressly provided, also, by the latter part of
Scetion 11 as amended by the Act of 1930 : —
“that no proceedings shall be taken in respect of an infringe-
ment committed before the advertisement of the accep-
tance of the application.”
Thus there is no real or effective remedy available for a Patentee
against infringement committed between the date of his application
for a Patent and the date of the advertisement of his Specification.
This is of course only reasonable : since it would be absurd if a
person could be sued for an infringement of a Patent in respect of
an act done at a time when no one had any knowledge except the
applicant for Patent and the Controller himself, to whom the applica-
tion had been then submitted, of its potential existence. The provi-
sion regarding innocent infringement would in itself ordinarily bar
any claim for damages in respect of any infringement committed
before the advertisement of the specification. This provision of
Section 11 goes further and its effect is that there can be no actual
infringement at all before that time. 1
Time before which suit cannot be instituted.
No suit can be instituted by the Plaintiff on any date prior to
the grant to him of his Patent. This seems clearly to follow from
the essence of his position and of his cause of action. Since he sues
only as Patentee ; and cannot be a Patentee before the grant of the
Patent is made.
Under the proviso to Section 7 of the Indian Patents &
Designs Act of 1911 there is an express provision to the following
effect : —
“Provided that an applicant shall not be entitled to institute
any proceedings for infringement unless and until a
patent for the invention has been granted to him.”
This is conclusive enough : and none the less so for being
inserted in the act as a proviso which follows as somewhat of a
1 See Dowling Billinyton (1898) 7 R. P. C. 191 at p. 201 and 205. For a
case where the statement of claim was struck out because there was no statement
that the alleged act of infringement was not prior to the date of acceptance of the
Patent see Schuster v. Bine Parker db Coy. Ltd. (1933) 52. R.P.O. 345.
560 THE LAW OF PATENTS IN INDIA [Ch. XV
non eequiter to tho rest of Section 7 ; which relates rather to loss of
rights and monopoly than to the enforcement of them. 8
This matter concerning the possible date of a suit in relation
to the date of the grant of the monopoly to the Plaintiff is quite
independent of any question concerning the date of the act com-
plained of (as an infringement) in relation to the date of the
commencement of the effective period of the monopoly, such
as is referred to in the latter portion of Section 11 of the Act
of 19U. 3
Time of commencement of immunity after Patent ceases.
Clearly if the act complained of has been done after the Patent
in question has ceased to be enforceable, there can be no claim for
any infringement. Various circumstances in which the Patent may
have ceased or may have temporarily become unenforceable, have
been indicated under the defences mentioned under Nos. 3 to 11.
Regarding expiry, the date operates automatically. Regarding
the lapsing of a Patent, this occurs under Section 14(2), also auto-
matically. Regarding the revocation of a Patent, it would appear that
it will be sufficient defence to a claim for infringement that an order
for revocation has been made • and that it is not essential that the
entry of such revocation should have been made on the Register of
Patents.
In practice it would seem that cases seldom arise where any-
thing turns on the precise time when the Patent ceased to be enforce-
able, since the Patentee will not ordinarily have sufficient incentive
at such a late stage in the life of the Patent to take any proceedings
for infringement.
9 Whether a Plaintiff in India could institute a suit after grant but before the
scaling of the patent or, in view of Section 2(12) before registration as patentee,
is a question which may await decision till the case arises. Under the English
Act of 1907 as amended in 1932 there is on this point an express provision con-
tained in Section 10 thereof to the following effect “Provided that an applicant
shall not be entitled (o institute any proceeding for infringement until the
patent has been sealed.” Before 1932 the wording under the United Kingdom
Act then in force was “until a patent for the invention has been granted to him” :
as in the present Indian Act.
1 See also at page 582 below under “Defence that the Plaintiff was not the
registered Patentee at the date of the institution of the suit”.
Ch. XV]
LOCALITY OF INFRINGEMENT
551
The view has been stated that a person who has infringed a
Patent by manufacture during the currency of the Patent may be
restrained from selling after its expiry. 4
Locality of infringement in relation to the grant.
It has already been observed that the monopoly created by a
Patent under the Indian Patents & Designs Act of 1911 only runs
throughout the territory comprising British India and British
Baluchistan and the Santhal Parganas and the Shan States. (See
page 31 above). It follows that it is a complete defence to a suit for
infringement in British India that the act complained of was done
outside the territory mentioned.
Foreign ship or foreign aircraft.
It is provided by Section 42 of the Act as follows : —
“42(1) A patent shall not prevent the use of an invention for
the purposes of the navigation of a foreign vessel within
the jurisdiction of any Court in British India, or the use
of an invention in a foreign vessel within that jurisdic-
tion, provided it is not used therein for or in connection
with the manufacture or preparation of anything intend-
ed to be sold in or exported from British India.
(2) This section shall not extend to vessels of any foreign
State of which the laws do not confer corresponding
rights with respect to the use of inventions in British
vessels while in the ports of that State or in the waters
within the jurisdiction of its Courts.”
It is clear from the wording of the section that exemption from
liability for infringement conferred under the section will only cover
cases where there would otherwise be an infringement by “use” of
the invention : and that the section would be no protection if an
infringing article or process were sought to be manufactured or sold
on board a foreign ship in Indian waters.
It would seem that the words "use of an invention for the pur-
poses of the navigation of a foreign vessel within the jurisdiction of
any Court In British India” employed in the section will cover a use
not on board the foreign vessel ; and that the exemption from
4 Bee Fletcher Moulton at p. 157.
552
THE LAW OF PATENTS IN INDIA
[Ch. XV
liability created by the section would apply even in a case where the
actual use was on land or on the water away from the vessel itself. 5
It would also seem that the exemption created by the section
covers such use on or in connection with a foreign vessel no matter
on what business the vessel may have come to India and no matter
for what reasons or how frequently she may come to India and no
matter for what period she may ply in Indian waters.
Since the section does not expressly refer to use on foreign
aircraft a question arises whether the word “vessel’* is to be
construed as including aircraft. If not, then the use on a foreign
aircraft within British India of an article or process patented in
British India will clearly be an infringement of the Indian Patent :
as the act at present stands. For it has been held in the United
Kingdom in cases prior to the enactment of the English Section 48,
that the use of articles patented in the United Kingdom on either a
British or a foreign ship within the waters of the United Kingdom
was an act of infringement ; and even that the mere presence of the
article as part of the ship’s equipment was sufficient to justify an
0 It will be observed from a perusal of the English Section 48 that in the
United Kingdom the exemption from liability for infringement under that
Section extends only to use under the following restricted conditions
(i) if the foreign ship belongs to a reciprocating foreign state.
(ii) if the foreign ship comes into the territorial waters of the United
Kingdom temporarily or accidentally only.
(iii) if the use is “exclusively for the actual needs of the vessel” and is
“in the body of the vessel or in the machinery, tackle, apparatus or other ac-
cessories thereof”.
On a foreign aircraft or land vehicle
(i) if it belongs to a reciprocating state.
(ii) if it comes into the United Kingdom temporarily or accidentally only.
(iii) if the use is “in the construction or working” of the foreign aircraft
or land vehicle.
A definition is also included in the English section relating to the test to
be adopted in arriving at a decision to what country a vessel or aircraft or
vehicle belongs. And provision is also made in the section giving power to
His Majesty by Order in Council to apply the section to vessels, aircraft and
land vehicles of a part of His Majesty’s dominions outside the United Kingdom
in like manner as to those of a foreign state.
In the United Kingdom provision has been made under Section 13 of the
Air Navigation Act of 1920 to prevent the detention or arrest of foreign aircraft
in cases of alleged infringement, on deposit of security.
Ch. XVI MANNER OF INFRINGEMENT 553
injunction. 6 And it would seem clear that similar principles would
necessarily apply under the Indian Act to foreign aircraft in British
India if not covered by any exemption from liability created by this
Section 42.
The use of an invention patented in British India on an Indian
ship or aircraft outside Indian waters and outside the territory
covered by the Indian grant will not constitute any infringement of
that Patent. 7
Manner of alleged infringement in relation to the grant.
It is obvious that any act which is not of such a nature as to
be a “making”, “selling” or “using” of the invention or a “counter-
feiting” or “imitating” of it within the meaning of Section 29(1) of
the Act will not be an infringement. Assuming for the moment that
the patented article or process is in all respects even identical with
the alleged infringing article or process, it still remains necessary,
in order that any infringement shall be established, for the act com-
plained of in respect of the alleged infringing article or process to be
such an act as to be an infringing act. Accordingly it is necessary to
consider in relation to the grant itself, apart altogether from the
Specification, by what manner of acts an infringement may be
committed.
Infringement by Manufacture.
Where the invention patented relates to an apparatus or a
machine, there can be no act more positively effective as an infringe-
ment than the manufacture (it may be by a rival manufacturer) of the
patented article.
It is immaterial whether the manufacture is preliminary to
sale in British India or is for the purpose of exporting the goods
abroad and selling them outside British India ; or whether it is a
manufacture only for private use. The objects and circumstances
of the manufacture are immaterial. It is the act of manufacture in
itself which constitutes the infringement. 8
0 See Fletcher- Moulton p. 157 ; Caldwell v. Van Vlissingm (1852) 21. L. J.
Ch. 97 (C. A.)
7 See Neuall v. Elliot (1864) 10 Jar. N. S. 954.
8 As to manufacture for export abroad sec Lyon v. Goddard (1894) 11.
R. P. C. 113. As to manufacture for private use, see United Telephone Company
y. Sharpies (1885) 2. R. P. C. 28.
70
554
THE LAW OF PATENTS IN INDIA
[Cfc.XV
Where the invention patented relates to a process, obviously
there can be no infringement by manufacture direotly of the inven-
tion, though there may well be infringement by use of the invention,
in the course of manufacturing something else. How far a sale or
use in British India of the final product alone may be said to be an
infringement of a patent which relates to a process of manufacturing
such product, is further considered hereafter . 9
Manufacture of replacements : Bona fide repairs.
It has been held in effect that a purchaser of a patented
article is entitled to do bom fide repairs to that article himself to
keep it in working order and to prolong its life without becoming
liable to a claim of infringement : provided such repairs do not
amount to the making of a substantially new article. This principle
may in some cases afford him protection even when replacing,
himself, complete parts . 10
Manufacture for purposes of experiment only.
Even manufacture of the patented article itself, if only for the
purpose of bona fide experiment, is not infringement. The principle
was clearly stated by Jessel M. R. in Frearson v. Loe lt an extract
of whose judgment on this point is as follows : —
“He (the defendant) said he did this merely by way of experi-
ment, and no doubt if a man makes things merely by way of bona
fide experiment, and not with the intention of selling and making
use of the thing so made for the purpose of which a patent has been
granted, but with the view of improving upon the invention the
subject of the patent, or with the view of seeing whether an
improvement can be made or not, that is not an invasion of the
exclusive rights granted by the patent. Patent rights were never
granted to prevent persons of ingenuity exercising their talents in a
fair way. But if there be neither using nor vending of the invention
for profit, the mere making for the purpose of experiment, and not
for a fraudulent purpose, ought not to be considered within the
• See under "Sale of product” at p. 557.
lu See Dunlop Pneumatic Tyre Oo. Ltd. v. Holbom Tyre Go. Ltd. (1901) 18.
R. p. 0. 222 ; Dunlop Pneumatic Tyre Co. v. David Moseley db Sons Ltd, (1204) 21.
R. P. C. 274 C. A. at p. 282 ; Sirdar Rubber Co. Ltd. v. Wallington Weston db Co.
(1907) 24. R. P. C. 539 H. L. ; also Fletcher- Moulton at p. 161.
(1878) 9. Ch. D. 48 at p. 66.
U
caw xt J
INFRINGEMENT BY SALE
665
meaning of the prohibition, and if it were, it is certainly not the
subject for an injunction. But, where you see a man using a
machine as this Defendant has done, under claim of a right to use
it, and under that claim of right he makes a quantity of goods, even
though a small quantity, I cannot call that an experiment within the
meaning of the rule as to experiments. He has made a maohine,
and, knowing it to be an infringement of patent, he claims the right
to make and use it, and his experiment is made to see how his
machine works. That is the experiment, as he calls it, putting his
machine to work from time to time, and then making screws with
the view of trying the screws themselves. It does not appear to
me, when I consider the circumstances under which the Defendant
made these alleged experiments, that I ought to treat this as coming
within the rule which prevents mere experiments being subject to
the liability of action being brought against those who make them,
and to the costs of an injunction being granted against them. In
this case I considor that the Defendant was making the screws in
exercise of an alleged right which has been disproved at the trial.”
On the facts in that case, as is clear from the passage above
cited, it was held that the manufacture was not within the principle
which exempts mere experiments from liability, yet the case is clear
authority, it is submitted, for the principle itself . 12
Infringement by sale.
Where the invention patented relates to an apparatus or a
machine, an infringement is clearly committed by a sale in British
India of the patented article.
Where the invention patented relates to a process, there cannot
ordinarily be an infringement by sale of the invention itself, though
the process may be used as a preliminary to the sale of something
else. How far a sale, or use, of a final product is to be regarded as
an infringement of a patent which relates to a process of manufac-
turing such product is further considered below . 13
Infringement by sale : offering for sale.
In a given case where there has in fact been no sale effected,
19 See also Proctor v. Bay ley db Son (1889) 6. R. P. C. 106 and, on appeal,
6. R. P. C. 538 ; also Pessers Moody , Wraith and Ourr Ltd. v. Newell db Go. (1914)
31. R. P. C. 510.
>a See under the head “Sale of product'’ at page 557 below.
556
THE LAW OF PATENTS IN INDIA
[Ch. XV
but there can be shown to have been an offering for sale, it may be
suggested that there has been an actual infringement, if not by sale,
then by use ; or it may be suggested that there has been by the
Defendant a threat to infringe by sale. On the one basis if actual
infringement is established, the Plaintiff will be entitled to claim
damages as well as an injunction : on the latter basis, an injunction
only.
The principle appears to have been established that a Plaintiff
is entitled to claim a permanent injunction for a threat to infringe. 14
Apart from this the principle has also been established in the
United Kingdom that possession of an infringing article accompanied
by exposure for sale, even without proof of any actual sale is in
itself an actual infringement. The law on this point has been
recently succinctly stated in No-Fume Ltd. v. Frank Pitchford <&
Co. Ltd. 16 by Maugham L. J. in these words : —
“Then there comes the question of the proved offer for sale
specified in the Pleadings, and evidenced by the circular letter, the
pamphlet and the advertisements which arc mentioned in paragraph
2 of the Particulars of Breaches. On that the Plaintiffs contend that
that is also an infringement. As at present advised, I do not
think it is. The grant of the Patent conferred on the Patentee the
sole right to make, use, exercise and vend the invention : and there
have been several cases in which the Courts have considered the
meaning of those words. There was a case in which it was said that
to expose for sale was not to vend the invention. That case was
considered by this Court in the British Motor Syndicate Ltd. v. J.
Taylor <& Sons Ltd. (1890) 7. R. P. C. 723. There the Court of
Appeal decided that the possession of an infringing article, accom-
panied by exposure for sale, even without the proof of any actual
sale, is actionable infringement. But no case has decided, and, as I
understand the ground of that decision no case ought to decide, that
a mere paper offer for sale of an article which, if sold without a lioence
from the patentee, would be an infringement is itself an infringe-
ment. Another question, no doubt, arises as to whether a written
offer of a particular article, when the written offer is intended to
14 See Frearson v. Loe (1878) 9. Ch. D. 48 at p. 65 and see Chapter XVII
under the head “Threatened infringement."
(1935) 52. R. P. C. 231 at 251.
11
Ch. XV]
OFFER FOR SALE
557
relate to an article which would be an infringement, ia not a threat to
infringe ; and, therefore, a threat which would justify an injunction,
as in the well-known case of Adair v. Young, L. R. 12 Ch. D. 13. It
may be that the Plaintiffs could have asserted that in this case, and
they might have been entitled possibly to an injunction but as in my
opinion, the offer for sale by the Defendants of the Velos "Non-
smoker ash barrel” was unaccompanied by proof of exposure for
sale, it was not an infringement of the Patent.”
It is to be observed however that the words of the grant of a
Patent in the United Kingdom are “make, use, exercise and vend ”
and that these differ from the words of the Indian grant which are
"making, selling and using.” It is possible that while an offer to sell
may well be held to come within the meaning of the verb to ‘‘vend’’,
yet it cannot be held to be a sale within the meaning of the word
“selling”. If this distinction is correct, then in British India an
offer to sell even though with possession and by means of an ex-
posure for sale, if it is an actual infringement in itself, will be so by
reason only of its being a “use” of the invention. If it is not a "use”
of the invention, then it would seem to follow that an offer to sell in
British India is not an actual infringement in itself at all, but merely
a threat to infringe. 18
Mere paper offer for sale.
While it has been settled in the United Kingdom that an actual
offer for sale, with possession, constitutes an actual infringement, it
is clear that a mere paper offer for sale without possession of any
infringing article has been held (in the case last cited) not to be an
infringement. It is submitted that this will be the position in law
also a fortiori in British India in view of the wording of the Indian
grant already noted.
Sale of Product.
Where the patented invention relates to a process, there is
some authority in the English cases which would support the proposi-
10 For authority that an offer for sale by exhibition or exposure fe an
infringement by “use”, see British Motor Syndicate Ltd. v. John Taylor db Sons
Ltd. (1900) 17 R. P. C. 723 C. A. at p. 729. See also at page 562 below under “Use
by exposure for sale”.
THE LAW OF PATENTS IN INDIA
[Ch. XV
turn that a sale is British India of articles which were a pro-
duct of such process, even if the process itself had never bees
operated in British India, would constitute an infringement of the
Patent . 17
The reasoning by which this proposition is arrived at is some-
what obscure ; however compelling may have been the motives of
public policy for enforcing it . 18
However it appears to have become a settled principle of patent
law in the United Kingdom that a monopoly for a process includes a
monopoly for articles made by that process r and accordingly even
though the process is not used within the realm, yet if articles made
abroad by the process are sold within the realm this is held to be an
infringement of the patentee's patent for the process.
It remains to be seen to what extent the Courts in British India
will adopt this proposition . 19
It is submitted that where the patented invention is for an
apparatus or a machine and not a process this proposition will not be
applicable, and that the sale in British India of products made abroad
by a machine similar to the patented machine will not constitute an
infringement ; though this point is not free from doubt . 20
Sale of machine through which a patented process may there-
after be worked.
v
Where the patented invention relates to a process, there is
authority in the English cases, which would support the proposition
that a sale in British India of a machine or apparatus by which the
11 See United Horse Shoe eft Nail Co. Ltd, v. Stewart eft Co, (1885) 2. R.
P. C. 122 ; Townsend v. Haworth (1875) 48. L, J. Ch. 770 and (1879) 12 Ch. D.
831 (note) ; Wright v. Hitchcock (1869) L. R. 5 Ex. 37 at p. 47 ; Saccharin
Corporation Ltd, v. Quincey (1900) 17 R. P. C. 337 at p. 339 ; Saccharin
Corporation Ltd . v. Anglo- Continental Chemical Works Ltd, (1900) 17. R.
P. C. 307 at p. 318. But see Wilder man v. F, W, Berk & Co, Ltd. (1925) 42. R.
P. C. 79 ; and see Flctcher-Moulton at p. 158.
18 See Fletcher- Moulton p. 158 and p. 17.
10 This question in a particular case may be one not only relating to the
terms of the grant but dependent on a construction of the Specification : is*
depending on whether the monopoly is held to be for a process or not.
30 See Terrell (8th edn.) p. 174 ; Fletcher-Moulton p. 158 note ip). -
Ch. XV]
INFRINGEMENT BY USE
process might be operated thereafter by the purchaser, would not
constitute an infringement of the Patent . 21
Sale of parts or separate integers by which a patented machine or
combination may thereafter be made.
See "Dunlop Pneumatic Tyre Co. Ltd. v. David Moseley db
Sons Ltd P
Infringement by use.
Use of the patented invention may clearly be a direct infringe-
ment, whether the invention is for an apparatus, or a maohine or a
prooess or anything else.
The word “using" has been given a very wide meaning. The
scope of the acts which constitute an infringement within the mean-
ing of the term in Patent Law is large. While it is true that in the
grant in operation in the United Kingdom there occur the two words
“use" and “exercise", and that the word “exercise" finds no place
in the Indian grant, yet it would seem that cases will be extremely
rare, if any, where the two words “use and exercise” will have any
materially wider scope than the one word “use". The Undermentioned
examples of cases decided under the English Patent Law may be
noted. There is no reason why the Indian Act should be given any
different meaning.
Use without Pecuniary Advantage : use for Instruction : for
Amusement.
In order that the use may constitute an infringing act, it need
not be a use for pecuniary advantage. It has been observed that
in certain circumstances a use for instruction or even for mere
amusement would constitute infringement. In United Telephone
Co. v. Sharpies it was sought to be argued for the Defendant that
the use of certain infringing telephone machines for the instruction
of pupils was no infringement. The point was dealt with in the
following observations of Kay J . 23 : —
51 Bee Townsend v. Haworth (1875) 48 L. J. Ch. 770 ; Adhesive Dry Mounting
Oo. v. Trapp <& Co. (1910) 27 R. P. C. 341. Bee also Cincinnati Grinders Inn)
v. B. S. A. Tools Ltd. 48 R. P. G. 33 at pp. 58.
** (1901) 21 R. P.C.274 (C. A.) Contrast or distinguish Incandescent Gas
Light Oo. Ltd. v. New Incandescent Mantle Co. (1898) 15 R. P. C. 81.
*» (1885) 2. R. P, C. 28.
560
THE LAW OF PATENTS IN INDIA
[Ch. XV
“But suppose that was not so. Imagine that I am to believe
all this extraordinary story, and that these were not bought for
that purpose, were not received in England for that purpose, what
is the alternative story ? The alternative story is this : The witness
Sharpies says, “We used them for the purpose of experiment ; the
cost of them was so small that we could afford to allow our
pupils to pull them to pieces, or experiment with them.” Now
they had, as he says, a number of the so-called royalty-paid instru-
ments ; they were more costly, and he says, again and again, “We
could not afford to let our pupils use those ; we could not afford
them to be pulled in pieces or experimented with, and therefore it
was that we bought those which were very much cheaper, in order
that our pupils might experiment with and use those instead of
using the more expensive instruments.” And I am asked to say
that that was not a user in this country. What does a pupil mean ?
They say that the pupils are persons who do not pay anything for
being taught, but on the contrary, that after they have been a
certain while in the business they, or certain classes of them, receive
some payment ; but the very word "pupil”, and this evidence which
is given, shows me plainly that they are young persons who arc
admitted into this business for the purpose of learning the business,
and, whether they pay or not, it is obvious enough that they are
paid very much less than an ordinary assistant would be paid who
did not want to learn the b U9 i ne99 - They are admitted upon the
terms that part of the remuneration they shall get for their services
shall be instruction in the business. That is apparent on the very
face of this statement *, and to say that to buy a telephone which
is an infringement of a patent in this country for the purpose of
instructing your pupils who arc learning the business, to let them
use, to let them experiment with, to let them, if they please, pull
in pieces, for the purpose of saving the expense of using the patent
telephone, experimenting with that or pulling that to pieces, is not
a user in this country, is a thing which I cannot accede to. It seems
to me plainly to be a user. If it were nothing but this, that it was
fixed between the lower room and the switch room for the purpose
of being used by the pupils who could not be trusted with the use
of the more costly instruments, it would be a part of the instruction
of those pupils, and the person who so used it would be getting
the advantage of instructing those pupils by means of these
Ch. XV] USE WITHOUT PECUNIARY ADVANTAGE 561
cheaper instruments, because he did not like to put into the hands
of his pupils the more expensive instruments. I am told that that
is not a use of the patent. I asked Mr. Goodevc how far he carried
his proposition — whether he carried his proposition thus far, that
there could be no user of a patent unless it produced a direct
pecuniary advantage to the person who used it ? At first he seemed
inclined to go so far, but 1 think at last he receded from that
position because I put to him the very obvious case of a man buying
what he knew to be a pirated Singer sewing-machine, for example.
Suppose, the real thing being protected by a patent, that he buys a
cheaper instrument which he knows is made in infringement of the
patent, and buys it for some member of his household, who uses it
in the household, let us say, for amusement simply — would that be a
user or not ? Of course, it could not be denied, because, although
it did not produce to him one farthing, or save him the expense of
one farthing, there would be no doubt whatever it would be a user
in this country. Therefore Mr. Goodeve modified his proposition,
and said “Oh, no, it must be a user for the purpose of advantage/ 1
Then, is not the user which I have been describing a user for the
purpose of advantage ? If not, I do not know what advantage or
user means. It seems to me clearly that here there was a user even
if I were to accept that story, which I am loth to accept, which I
do not accept, which I cannot believe to be true, that even on that
alternative view of the case there was such a user of these pirated
articles (pirated when they were introduced into this country, at
any rate) and made in imitation of the Bell and Blake patents, as
it would be impossible to maintain in this country.”
Use even as a stand-by only, may constitute infringement.
It has been observed that in certain circumstances the use of
the patented invention even only as a stand-by might be an infringe-
ment : as in a case where the patented invention were to be one rela-
ting to a fire extinguisher. See British United Shoe Machinery Coy .
Ltd. v. Simon Collier Ltd. 27. R. P. C. 567 at 571 and 572.
It was also suggested in the same case, that where a machine was
used in a factory as a spare this would also constitute actual in-
fringement by use.
It is submitted that there would only arise actual infringement
in such circumstances where the use in the manner indicated was
71
582
THE LAW OF PATENTS IN INDIA
[Ck. XV
a use for the purpose for which the invention had been intended.
It will be noted hereafter that ordinarily mere possession without
actual use of the invention does not constitute actual infringement :
though it may of course afford evidence of an intention to infringe
so as to afford grounds for an injunction only on the basis of a
threat to infringe.
Use by exposure for sale.
In British Motor Syndicate Ltd. & Others v. John Taylor <6
Sons Ltd. 2i the view of the Court of Appeal clearly and unequivocally
stated that an exposure for sale was an infringement : either as a
“vending" in terms of the English grant or as a “using" thereunder.
Certain observations by the Court in Minter v. Williams 25 were
considered and as will be seen from the judgments, in so far as
such observations might be taken to express any contrary view,
they were disapproved.
It is submitted that in British India possession with an
exposure for sale is clearly a use of the invention such as will in
itself constitute an actual infringement. 28
Use for exhibition as samples for sale.
Since it was held in Hudson Scott <(; Sons Ltd. . v. Barringer
Wallis & Manners Ltd 21 that exhibition as samples for the purpose
of effecting sales was prior user so as to constitute an anticipation
amounting to public knowledge.it has been suggested that use in that
manner would, if the case'' were to arise, probably be held to be use
amounting to an infringement also. 28
Possession alone need not constitute infringement : as where the
absence of any intention to use is disproved : or possession of a
bailee for repairs.
In British United Shoe Machinery Co. Ltd. v. Simon Collier ,
Ltd. 29 where there was possession by the Defendant and it was shown
* 4 (1900) 17. R. P. C. 723.
*» (1835) 4 A & E 251.
* * Bee also at page 535 above.
* 7 (1906) 23 It. P 0. 79 at p. 87.
88 See Fleteher-Moulton at p. 15!).
*• (1910) 27 R.P.C. 567 at p. 571. See also Pessert Moody Wraith and Qnrr
Ltd. v. Kctrell & Go. (1914) 31. R.P.C. 510 (possession without using till patent
expired).
Ch. XV] MERE PURCHASE 5©
that the patented machine had not been used and would not be used
it was held there was no infringement. (See the passage in that case
cited below).
Similarly it would seem that mere possession as a bailee for
repair will not in itself constitute an infringement : see United
Telephone Co. Ltd. v. Henry & Co. (Below).
Possession and lending only is not an infringement.
In the United Telephone Co. Ltd. v. Henry Co. 30 it was found
that one Fisher trading as R. Henry & Co. allowed a person who
was not a party to the suit to take away from the Defendant's shop
premises on loan a certain telephone instrument which was alleged
to be an infringement of the Plaintiff Company's patent. There was
no other act of use or sale, established on the part of the Defendant.
The Defendant stated the machine had been sent to him for repair,
but he had not done and he had refused to do the repairs. It was held
that what had been done by the Defendant being a mere lending of
the instrument to the third party was not an infringement.
Mere purchase and possession without more will not in itself
constitute infringement.
Possession of the invention alone may raise a presumption that
the invention is used. And if there is no evidence to rebut the
presumption it may be that this will be considered proof of use and
accordingly of infringement.
Thus in the United Telephone Co . Ltd. & Others v. London &
Olobe Telephone & Maintenance Co. Ltd ? 1 the Defendants had
purchased and were in possession of machines the use of which, if
used, would have been an infringement. A perpetual injunction was
issued. The possession in that case appears clearly to have been
possession with intention either to sell or to use.
But, apart from the operation of such a presumption, the
actual possession alone is not such a use, ordinarily, as to constitute
infringement in itself. The law on this point was clearly enunciated
by Lord Dunedin in his speech in British United Shoe Machinery
Co. Ltd. v. Simon Collier Ltd ? 2 at p. 572 thus : —
90 (1885) 2. R. P. 0. 11 at p. 12.
81 (1884) 1. R. P. C. 117.
19 (1910) 27. R. P. C. 567 (H.L.)
564
THE LAW OF PATENTS IN INDIA
[Ch. XV
“I have no doubt that the possession of an installed machine
by a manufacturer for the purpose of his business raiscs t as a rule, a
presumption that it is used. Here that presumption has been
rebutted by the admitted fact of non-user. But then it is said that
the attachment here has been used because the machine is part of an
equipment for the purpose of the business, although de facto it has
not actually been employed.
I have no doubt there may be use of that character. Two
illustrations have been given which were mentioned by my noble
and learned friend on the Woolsack. In the one case, the case of
fire extinguishing apparatus, the use, I think, consists in the actual
provision of the means for extinguishment. In the other case, that
of a spare steam engine, the spare steam engine is really an extra
part intended in certain circumstances to be used for exactly the
purpose for which the whole machine is being actually used. Here
the dismantled part is meant to serve for a separate operation,
namely, the making of a different shape of boot. I think that the
evidence establishes two propositions : one that there was no inten-
tion on the part of the Defendants to make that shape of boot : and
the other that there was no likehood that they would be called upon
to make it. That being so, I do not think it is enough to say that, if
a sufficiently tempting order had come, they might have used the
patented part of the machines. To say that, docs not, in my opinion,
stamp the attachment as an equipment for the purposes of the
business.”
The observations of Lorcburn L. C. on the point are to the
same effect : vix : —
“It is admitted that the Defendants had two machines, parts of
which were said to be included within the Patent ; and I think that
there was a presumption of fact that the Defendants, being in
possession of these articles, had either used them, or had them for
the purpose of using them. But in point of fact it is admitted that
the Defendants received these machines in a state in which the
patented invention could not be used, and that they kept them in
that state ; and also that they never did in fact practically apply
any part of the machine that was included within the Patent. But
it is said that nevertheless there was a user by the Defendants,
because they might at any time have connected up the patented part
Ch. XV]
CLEARING THROUGH CUSTOMS
565
of the machine with the remainder of the machine, and that they
kept it as a stand-by to be made use of if occasion required.
Of course there may be a user if a patented article is kept as
a stand-by. Lord Justice Moulton refers to one case in which that
might happen ; and another was illustrated by a question of one of
your Lordships, relating to the possible use of bottles containing
liquid which would extinguish fire, if fire broke out. There may bo
such cases, no doubt, which I do not in the least intend either to try
to specify or to try to define. But here I do not think that the
patented article was used as a stand-by at all. No one of the
learned Judges disputes the honesty of the witnesses who were called
on behalf of the Defendants ; and I find no trace either of a disbelief
in their statements on the part of any one of the learned Judges, or
indeed of any argument to the effect they were undeserving of belief
having been advanced in the Court below. The patented part of this
machine was in fact of no use to the Defendants and was put aside
by them, and they never thought of using the patented part, nor was
it appropriate to their trade.
Lord Justice Moulton used language which I desire to adopt.
He said “I think the fact that they never made these boots never
thought of making them, never intended to make them, and that they
used this machine largely for that for which they bought it, namely,
for its use in other boots, clearly sets aside the ordinary inference
that would be drawn from the presence of these machines on their
premises. Unless we could say that the mere purchase of machines,
which infringe, constitutes an infringement, I do not think we can
find for the Appellants in this case."
Merely clearing through the Customs held not an infringement.
It has been held, in Nobel’s Explosives Co. v. Jones Scott cO
Co . 33 that the acting merely as Customs House Agents for an im-
porting firm was not a use of the invention so as to constitute
infringement.
The following are certain of the observations made by James L.J.
in the course of his judgment in the Court of Appeal in that case : —
“What is actionable, and what the Plaintiffs' rights are, is
shewn by the letters patent themselves. The rights of the patentee,
~ 1 3 (1881) 17. Ch. d772~ ” ~ ~~
986
THE LAW OF PATENTS IN INDIA
[Cb.XV
which nobody can infringe, are that the patentee and hie assigns, and
no others, may during the term make, use, exercise, and vend his
said invention. Can anybody say that going to the Custom House
and writing to the Custom House for Krebs & Co. for a warrant to
discharge things from a ship into a barge is making the invention ?
Is it using it — is it exercising or vending it ? It seems to me it is
neither making, using, exercising, nor vending the said invention.
Krebs & Co., the persons who had the control over it, or the persons
who had the possession, may, in one sense, be said to be using it ;
having regard as Mr. Aston said, though I do not think it is necessary
for us to determine the point, to the particular nature of the
invention in this case, which was one by means of which every drop
of the highly explosive thing nitro-glycerine is coated with some
other material in such a way as to make it storeable, movable,
and transportable with safety. Therefore, as the effect and utility
of the patent, according to Mr. Aston’s view — and he may be right
in that — was the safety communicated to the nitro-glycerine by
means of the particular invention, if Krebs & Co. were to bring the
thing into this country for the purpose of sending it abroad, even
without either opening the packages, if the packages were on board
a ship or in a warehouse in England, and there stored bona fide with
a view of being sent out of this country, it is possible that they
might be hold to bo using it in this country nearly in the same sense
as persons were held to be using Betts’ Patent Capsule, because
Betts’ Patent Capsule was protecting the liquor in this country,
which was the use of the invention. But a man who has no
possession of the thing, and has no control over it, and who has no
dominion or power to deal with it, to whom the safety or the want of
safety is not of the slightest consequence, cannot be said to be using
the invention ; and that is the only way in which it could be said
that these letters patent were infringed. And as of course nobody
could pretend to say that he was making, exercising or vending it,
it docs not come within cither of those. It is not necessary to go
through the prohibitory words, which do not carry it any further.”
In that case there was no actual transportation of the goods
by the persons who were the Defendants : and as was observed by
James L. J. and also by Baggallay L. J. M there was not even actual
*4
Bee ibid at pages 741 and 745.
CL XV]
TRANSPORTATION
567
possession by the Defendants of the goods embodying the patented
invention.
Transportation.
Transportation may constitute infringement when such
transportation is in such circumstances that there is a continuing
use of the invention. Thus in Betts v. Neilson 35 the patented inven-
tion was for metal capsules for containing beer in bottles. The
patent in suit did not extend beyond England, Wales and the town
of Berwick-upon-Tweed and did not extend to Scotland. The
Defendants sent capsuled bottles from Scotland into England for the
purpose of exportation from England. Therefore, as it was put in
the speech of Lord Westbury, “Whilst the bottles travelled through
England, as soon as they passed the border there was an user of the
capsules by the Defendants and the capsule was performing its
proper function during the whole time of the transit of the bottles
through England and their remaining in England until they were
exported.” As it was put in the speech of Lord Colonsay : —“No
doubt the capsules were made elsewhere ; no doubt they were in the
first place applied to the bottles elsewhere ; but still they were used
for the benefit and profit of the Defendants all the time they were
passing through England, or lying in England to be shipped to other
places ; they wero performing their use and their purpose during
the whole time". In those circumstances it was held in effect that
by the transportation of the beer in bottles fitted with the capsules
there had been an infringement on the part of the Defendants by use
of the patented invention.
Similarly in NobeVs Explosive Co. v. Jones Scott & Co . 36 the
Patent related to an invention for making the handling of nitro-
glycerine less dangerous, by causing it to be absorbed in porous non-
explosive substances. By means of the invention a substance called
lithofracteur was produced which was extensively manufactured and
dealt in by the Plaintiffs and was used, as it appears, in connection
with the packing, storage and transportation of nitro-glyccrinc. On
the point now under consideration Bacon, Vice-Chancellor, made
the following observations : —
n5 (1868) 3. Ch. App. 429 and (1871) L. R. 5. JET. L. 1.
* c (1881) 17. Ch. D. 721.
568
THE LAW OF PATENTS IN INDIA
[Ch, XV
“Stopping at this part of the case, I have to consider the first
ground on which the Defendants rely. It has been argued on their
part that the manner in which the lithofracteur was dealt with does
not constitute a user or exercise of the Plaintiffs’ patent : that the
merely procuring the delivery from the ships in which the commodity
was carried, and the subsequent transhipment thereout into
lighters, by which it might be carried elsewhere, such acts being
done within this realm, were innocent acts by the Defendants, by
which they neither used nor exercised the invention which is the
property of the Plaintiffs.
Having regard to the nature of the invention, and that its most
essential quality is that it acquires for nitro-glycerine “the property
of being in a high degree insensible to shocks,” it appears to me
that it is impossible to tranship, or in any manner to handle or move
the commodity made according to the invention, without at the same
time using the invention.
In Betts v. Neilson 37 a case I am about to mention more parti-
cularly, the invention consisted of a method of combining metals of
which capsules were made, and when made, usefully applied, to
bottles of liquid, whereby external air was excluded and the
contents protected from deterioration. The Defendants bottled
beer in Scotland to which they applied the patentee’s invention, and
sent it so bottled to England, not for sale there, but for the purpose
of being exported thence to foreign parts. The Defendants there
insisted that doing this' was no infringement ; that the beer was
merely in itincre in England *, and that its resting there with
English agents was no such active use of the capsules as could
constitute an infringement. It was decided in that case, as well by
the Vice-Chancellor Wood as by the Lord Chancellor, and subse-
quently in the House of Lords, that this was a direct infringement
of the patent.
The Vice-Chancellor said 38 “The capsules then were in use for
the very purpose for which they were invented.”
The Lord Chancellor (Chelmsford), on hearing an appeal from
the Vice-Chancellor, expressed himself thus : “With respect to the
L.R.3.Ch.App.429. ~
■" N. It. 221, 222.
Ch. XV]
OASES
609
case of the article being brought into an English port and remaining
on board the vessels, atad transhipped for exportation, if the mode
of transmission adopted by the Defendants amounts to the user of
the capsule in England, I can see no distinction on principle between
the patented article being placed in a warehouse on land, and the
ship in which it is brought from Scotland being made the warehouse
until it can be put on board another vessel for exportation ". 39 And,
again : “It is the employment of the machine or the article for the
purpose for which it was designed which constitutes its active use ;
and whether the capsules were intended for ornament, or for protec-
tion of the contents of the bottles upon which they were placed,
the whole time they were in England they may be correctly said to
be in active use for the very objects for which they were placed
upon the bottles by the vendors ." 40
In the Court of first instance there was accordingly a decree
passed in favour of the Plaintiff Company. On appeal by the Defen-
dants this decision was reversed, but not on the point which has
been referred to, (whether transportation in the circumstances
mentioned would have amounted to a use constituting an infringe-
ment) ; but on the different point that the Defendants themselves aB
clearing agents only had not had possession of the goods and, in
effect it is submitted, were not the persons transporting the goods.
The point on which the Vice-Chancellor’s observations have been
referred to was not decided in the Court of Appeal : vix, whether if
the persons who had had possession of the goods and had been
transporting them had been sued, they would or would not have
been liable.
It is submitted therefore that the principle enunciated by the
Vice-Chancellor is a correct statement of the law on the point.
In the light of what was said in the two cases last mentioned
the full meaning becomes readily understood of the passage on this
point in the judgment of Lord Alverstone L. C. J. in British Motor
Syndicate Ltd. and others v. John Taylor <fb Sons Ltd.* 1 to the
following effect : —
*• L. B. 3 Ch App. 429 at p. 438.
44 L. B. 3 Ch. App. 429 at p. 439.
41 (1900) 17. B.P.C. 723 (C. A.) at p. 730.
72
570 THE LAW OF PATENTS IN INDIA [Ch. XV
“The question of whether there is infringement by transporting
from place to place depends entirely upon whfet is protected by the
Letters Patent and what is the nature of the invention which has
been used : and speaking for myself I should equally wish to reserve
consideration of that point. There may be transportation which
would be no infringement ; there may be transportation as in Neilsan
v. Betts which undoubtedly would involve infringement.”
Contracting in British India for sale abroad.
It is clear it is submitted that the making in British India
of a contract for sale abroad of a patented article is not an infringe-
ment of an Indian Patent. If any authority should be desired for
this view reference may be made to the case of Saccharin Corpn.
Ltd. v. Reitmeyer Co .* 2 where it was conceded that such a contract
was not a “use” of the invention, and it was held that it was not
even an “exercise” of the invention within the wording of the
English grant. The decision in that case was followed in the House
of Lords in Badische Anilin and Soda Fahrick v. Hickson .* 3
Using for purposes of experiment only.
It would seem that a persou using the patented article purely for
purposes of experiment may in certain cases be free from being
held to infringe, on the same principles as have been mentioned in
connection with cases of manufacture for purposes of experiment . 41
Defence of licence from.. the Patentee.
It will be a good defence to a claim for infringement of Patent
that the Defendant was lawfully entitled to do those acts by reason
of a licence granted to him from the Patentee. This will be so
whether his case is that the Patentee and the Plaintiff are the same
person or not. In this respect the matter is on much the same
footing as a defence of leave or licence granted by the owner to the
Defendant in a suit for trespass. The onus of establishing such
licence and the fact that the thing complained of was covered by
the licence is of course on the Defendant. In connection with the
4 » (1900) 17. K.P.C. 606 at p. 611.
4 » (1906) 23. R.P.C. 433.
44 See page 554 ante.
See Scott v. Hull Steam Fishing and Joe Co. Ltd. (1897) 14. fi. P. C. 143.
Ch. XVI
LICENCE FROM THE PATENTEE
571
question of the availability to. a Defendant of the defence that he
had at the time of the alleged infringement' a licence, express or
implied, it may not be out of place to note here certain points
affecting the grant and extent and nature of licenoea generally.
Power of patentee to grant licences.
Under the form of Letters Patent in use in Great Britain it
is expressly mentioned in the grant that the patentee shall have
the right to grant licences to other persons. Thus the grant of the
patent by the Crown is not personal exclusively to the patentee 5
and has never been so regarded.
Under the form of grant in use in British India there is no
express mention of licences under that term : but (what comes to
the same thing), after it is stated in the grant that the grantee shall
“have the exclusive privilege of making, selling and using the inven-
tion ”, the grant goes on to add the express words “and of
authorising others so to do.” This power is repeated in Sec. 12(1)
of the Act of 1911. The whole scheme of the Indian Patents and
Designs Act is fou nded on the assumption that the patentee has
a right to grant licences as well as to assign his patent. And by
Section 63(3) in particular of the Act of 1911 it is expressly
provided that he has such power. The section reads as follows : — •
"63(3) The person registered as the proprietor of a patent
shall, subject to the provisions of this Act and
to any rights appearing from the register to be vested
in any other person, have power absolutely to assign,
grant licences as to, or otherwise deal with, the patent
and to give effectual receipts for any considera-
tion for any such assignment, lioence or dealing.
Provided that any equities in respect of the patent
may be enforced in like manner as in respect of any
other movable property.”
Licence how differs from assignment.
The difference is well stated in Terrell on Patents (8th Edn.)
at p. 253 as follows : —
“There is a fundamental distinction between an assignment
of a patent and a licence under a patent. By the former
the assignee stands, when registered, in the shoes of the
572
THE LAW OF PATENTS IN INDIA
[Ch. XV
assignor, and is fully entitled to deal with the patent
and to sue in respect of infringement thereof. A licensee,
on the contrary, is merely permitted to do acts which
would, but for the lioence, be prohibited, that is to say,
to uso the invention, as distinct from using the
monopoly right which was conferred upon the patentee
in respect of his invention. Other contractual rights
as between the parties may be created by the licence, as
in the case of an exclusive licence, where the patentee
contracts not to grant other licences, but no rights can
be conferred as between the licensee and the public.”
Licence personal unless agreed to the contrary.
In the absence of agreement to the contrary, express or implied,
a licence is personal only to the licensee. He is not entitled there-
fore to assign it or to grant sub-licences thereunder to other persons.
Sub-licence : Licence or benefit thereunder is transferable by sub-
licence when so agreed.
The terms of the licence will depend on the wording thereof
and the terms intended to be made between the contracting parties.
If it is expressly stated that the licence is granted to the licensee and
his assigns or that the licensee is entitled to grant sub-licences, then
he is legally fully entitled to do so. There is nothing to prevent
a licence being granted on these terms : the matter being entirely a
matter of arrangement ^between the contracting parties. If the
lioence is merely granted *‘to the licensee and his assigns” this will
be construed as giving the licensee a right not only to assign but to
grant sub-licences. If there is anything which shows that there
was an intention that the licence should not be limited exclusively
to the individual the licence may be construed as carrying a right to
assign or to grant sub-licences. See Lawson v. Donald Macpherson
dk Co. Ltd.* 5
Sub-licence arising on estoppel.
Even if the licence itself is not expressed to give the licensee
the right to grant sub-licences, yet if the patentee accepts royalties
from the sub-licensee, it would appear that he may be estopped from
disputing the sub-licensee’s right to the licence.
4ft
14 B. P. 0. 696 at 697 & see Terrell p. 241.
FORM OF LICENCE
573
Ch. XV]
Form ol licence.
The form of grant of the patent as used in India contains no
reference to the nature of licences to be granted by the patentee and
no restriction in respect of the form in which they may be granted.
An agreement to grant a licence will be effective whether
verbal or in writing.
If in writing it will require to be stamped with a twelve-anna
stamp as an agreement. (See the Indian Stamp Act, Art. 5).
Registration of licences.
Section 20 of the Act of 1911 provides for the keeping at the
Patent Office of the Register of Patents and for the entry therein of
licences. It is also provided under Section 63(2) of the Act of 1911
as follows : —
“63(2) Where any person becomes entitled as mortgagee,
licensee or otherwise to any interest in a patent
he may make application to the
Controller to register his title, and the Controller shall,
on receipt of such application and on proof of title to
his satisfaction, cause notice of the interest to be entered
in the prescribed manner in the register of patents
with particulars of the
instrument, if any, creating such interest.”
It is further provided by Section 63(3) to which reference has
already been made above (at page 571) than an assignment or liccnco
can only be granted by the patentee “subject to any rights appearing
from the register to be vested in any other person”, and “provided
that any equities in respect of the Patent or design may be enforced
in like manner as in respect of any other movable property”.
Since the effect of these two sub-sections is that if the licence
is registered the patentee cannot afterwards grant any further
licences or deal with the patent except subject to that licence, it is
highly advisable for a licensee to obtain registration of his licence
at the Patent Office as early as possible.
There is this further reason why he should do so. If the
licence is in writing, it may be found to be inadmissible in evidence
in Court unless registered. This is the effect of the provisions of
Section 63(4) whioh is as follows : —
THE LAW OF PATENTS IN INDIA
[Ch. XV
574
“63(4) Except in the case of an application made under
Section 64, a document or instrument in respect of
which no entry has been made in the register in accor-
dance with the provisions of sub-sections (l)and(2)
shall not be admitted in evidence in any Court in proof
of the title to a patent or to
any interest therein, unless the Court, for reasons to be
recorded in writing, otherwise directs.”
Furthermore it is provided under Section 20(3) of the Indian
Patents & Designs Act of 1911 as follows : —
“(3) The register of patents shall be prima facie evidence
of any matters by this Act directed or authorised to be
inserted therein.”
Thus there is the positive advantage from registration that
the entry in the register, by being prima facie evidence, will in most
cases be sufficient evidence of itself of the licence : and the positive
disadvantage from non-registration, ordinarily, of inadmissibility.
Provision is made for the supply on request of certified copies
of the entry of such a- licence under Section 59.
Defence that the Defendant is an express licensee.
A Defendant will of course, have a clear defence against a
claim for infringement if he can show he has been granted an express
licence from the Patentee which was current at the time of the
alleged infringement and covers the act complained of.
Where there are Joint Patentees it may be that a licence will
be not effective if not granted by all. 46
Implied licensee.
It will furthermore be a • good defence against a claim for
infringement if the Defendant can establish that in the circumstances '
of the case he was at the time of the aot complained of an implied
licensee of tho Patentee.
A class of case where suoh a defence will be available is where ■
there has been a sale or manufacture by the rightful patentee or his
agents abroad and a'subsequent importation by the Defendant into
See In re Horsley & Knighton's Patent (1869) L. R. 8 Eq. 476 at p. 477 ;
see also Terrell at p. 276.
Ch. XVI IMPLIED LIOENOE 575
British India, since such original sale by the Patentee (in the absenee
o f special restrictive clauses in the contraot of sale) carries with it
an implied licence generally to use or deal with the patented articles
freely, including a right to import into and re-sell in British India.
The leading case in which this principle of law was clearly stated
is Betts v. Wilmot. 47
If a patentee sells the patented article abroad without imposing
in the contract of sale any special Conditions, such sale implies the
grant of authority to use and sell it co-oxtensive with the right
of the vendor at the date of the sale. 48
Accordingly the buyer is entitled to import the article into
British India and sell it in British India. Should he do so and be
sued for infringement his ground of defence, properly stated, is that
he has been licensed to do so by the patentee.
Another class of case where the Defendant may be relieved of
liability on grounds which may properly be described by stating that
in the circumstances of the case he has been granted an implied
licence from the Patentee, is where the act complained of as being
an infringement has been done by the Defendant at the directions
of the Patentee or of an authorised agent of the Patentee. The
leading case which is an illustration of this class of case is Kelly v.
Batchelor (1893) 10. R. P. C. 289. Sec also Henser and Ouignard
v. Hardie 49 where it was observed by Charles, J . as follows : —
“The particulars of breaches do not complain of the manu-
facture of the machines. It is quite clear Mr. Crichton meant no
harm in manufacturing them, and it may not be that he was guilty
of infringement by manufacturing them ; but I cannot consider it
because the Particulars of Breaches do not complain of the manu-
facture of them at all. The Particulars of Breaches complain of
their use, first at Chester, and then at Birkenhead and other plaoes,
in a stage competition or stage race, and I have bad described to
47 (1871) 6 Ch. App. 239. Distinguish Soeiete Anonymede Manufactures
de Olaces v. Tilglman's Patent Sand Blast Co. (1884) 25. Ch. D.l. For an applica-
tion in a passing oil suit of a somewhat similar principle see Bonnan v. Imperial
Tobacco Co. IAd. (1923). 50 Cal. 762 and (1924) 51 Cal. 892 (P. C.) at p. 900.
48 See Terrell .p. 242. See Gillette Safety Raxor Coy. Ltd. v. A. W. Gotnags
Ltd. (1908) 25. R. P. C. 492.
48 (1894) 11. R. P. O. 421 at p. 427.
676
THE LAW OF PATENTS IN INDIA
(Ch. XV
me exactly what occurred at Chester, when Mr. Quigniard went down
to Chester to see his own machine. When he got to Chester he was
very much surprised and annoyed obviously at finding that Mr.
Crichton had manufactured a couple of other machines, copies of
his own, and he said at once, “Here is an infringement”. A con-
versation ensued between the patties ; they were on perfectly
friendly terms at the time, and according to Crichton — and I see
no reason to doubt him — he said “If you really object so strongly
to this, I will not use them at all” “Oh, no” said the Plaintiff, “I
should not like to do that • let them be used, and I will consult my
solicitor when I return to London and see what shall be done for
the future.” Thereupon, used they were, and according to the
Plaintiff on one evening, and according to the Defendant on three
evenings, Mr. Guignard actually rode his own machine on the stage,
and after the stage race had been given, he gave an extra perfor-
mance to show the merits of his own machine, which was highly
appreciated by the public, and I think he was called before the
curtain on more than one occasion. At any rate, on one occasion
he was certainly led before the curtain by Mr. Crichton and compli-
mented by the audience. Under these circumstances, for the
performances at Chester, it soems perfectly idle to ask me to give
either damages or to grant an injunction. What on earth are the
damages that I oould give under the circumstances which have
been proved in my hearing with regard to Chester ? I should have
had the greatest difficulty in giving the smallest coin, even without
the evidence, because Mr. Guignard suffered no damage that I can
see beyond the mere infringement of his legal right through what
occurred at Chester. He cannot ask me for damages for the mere
infringement of his legal right— he cannot ask me for one shilling,
because, in my judgment, the whole of the proceedings at Chester
were proceedings by his actual leave and licence. It is news to me
to hear that that is not an answer to a claim for damages just as
much as it is with regard to a claim for an injunction. Therefore,
I decide, as regards the Chester performance, that there is no ground
for either damages or an injunction.”
It may be noted however, as is pointed out In Flelcher-Moulion
on Patents 60 that in the majority of Patent cases the evidence of
See page 162.
Ch. XV]
THE SCOPE OF THE LICENCE
577
infringement is a sale to an agent of the Patentee, and that no
defence of any implied licence arises ordinarily in such a case . 51
The distinguishing test appears to be whether the agent of the
Patentee, who will have gone with the express purpose of purchasing
an article which he hopes may turn out to be an infringement, has
given express or clear instructions to do a particular act which
amounts to an infringement or not . 52 In the case of Kelly v. Batchelar
he gave explicit directions to the Defendant how to make the article
(a ladder) in such a way as would otherwise have amounted to an
infringement. In cases where he merely places an order for the
purchase of an article and leaves it to the Defendant to choose
whether he will supply the order or not, and what nature of article
he will supply to meet the order, there will not be held to be any
implied licence created.
The scope of the licence must cover the alleged infringing act.
Of course it will be open to the Patentee to refute the defence
that the Defendant was a licensee by showing that, though the
Defendant had indeed a licence, such licence did not cover the scope
of the particular act done by the Defendant and complained of by
the Plaintiff* as being the infringement : or did not cover the
locality in which the act was done : or that such licence was issued
only on conditions which the Defendant had failed to perform. A
Patentee, as to the sale which he licenses by distributors of his
patented article, may impose conditions. As such a condition he
may stipulate a minimum price. It will then be no defence for a
Defendant to plead the general licence, if he has sold above the mini-
mum price . 53
01 There have been from time to time several pronouncements of the Courts
as to the proper and improper method of placing trap-orders. See C. C. Wake field
db Co, Ltd. v. Parser (1934) 51. R.P.C. 167 at p. 1714 (a passing-off action) ; com-
pare also Alfred Dunhill Ltd. v. Griffiths Bros. (1934) 51. R.P.C. 93 at p. 96
(a patent action).
oa See Dunlop Pneumatic Tyre Co. v. Neal. (1899) 16. R. P. C. 247.
08 See eg. Huntoon Co. v. Rolynos Inc. (1930) 47. R.P.C. 403 (C.A) and Basset
v. Graydon (1897) 14. R.P.C. 701 (II.L.); and see Terrell (8th edn.) at p. 235 :
as to the nature of the acts authorised by the licence. See Fuel Economy Coy.
Ltd. v. Murray (1930), 2 Ch. 93 (CA) (as to locality); Alfred Dunhill l Ad. v.
Griffiths Bros. (1934) 51. R.P.C. 93 (as to price).
73
578
THE LAW OF PATENTS IN INDIA
[Ch. XV
Defences that the Defendant was a Joint Patentee or the Agent of
the Patentee or an Agent of a Joint Patentee.
A Joint Patentee has a right to make, sell and use the inven-
tion independently of his co-Patentee or co-Patentees. In a case
therefore where there may have been a dispute between two persons
as to who was the true and first inventor and finally the Controller
may have made a grant of the Patent in the names of both persons,
jointly, if these persons thereafter choose to do business in competi-
tion against each other, neither will be entitled to claim for infringe-
ment against the other.
Since a Patentee is not bound to do all the manufacturing or
selling of his patented article himself, alone, but is entitled to employ
agents and servants for the purpose of his business in connection
with the exploitation of his patented invention, it follows that it
would be a good defence to a claim for infringement if the Defendant
be in a position to establish that in doing the act complained of he
was himself acting as the Agent or servant of the Patentee. Though
such a case may be seldom likely to arise, it is not impossible to
visualize such a case in relation to some business where there is a
world-wide selling organisation, in which it may be, on occasions,
extremely difficult to define the precise legal relationship of one party
with another, or to decide whether the person against whom the
claim for infringement has been made was acting at the time as an
agent or on his own account.
A similar defence would be available if the Defendant were to
be in a position of an agent of another person who was a joint-
patentee of the Plaintiff.
The defence of innocent infringement.
It is provided by Section 80 of the Iudian Act as follows : —
“30. A patentee shall not be entitled to recover any damages
in respect of any infringement of a patent granted after
the commencement of this Act from any Defendant who
proves that at the date of the infringement he was not
aware nor had reasonable means of making himself
aware, of the existence of the patent, and the making of
an article with the word “patent” “patented”, or any
word or words expressing or implying that a patent has
Ch. XV]
INNOCENT INFRINGEMENT
579
been obtained for the article, stamped, engraved, impres-
sed on, or otherwise applied to the article, shall not be
deemed to constitute notice of the existence of the
patent unless the word or words are accompanied by the
year and number of the patent :
Provided that nothing in this section shall affect any proceed-
ings for an injunction.”
Innocent infringement within the terms of this section will
thus be a complete defence against a claim for damages for infringe-
ment. It will not however be any defence against a claim for an
injunction. Nor can it be said, in a case where a Defendant has acted
innocently within the terms of this section, that there has therefore
been no infringement committed.
It is to be observed that the only grounds of exemption from
liability for damages are ignorance of the existence of the Patent.
Apart from this, neither the presence or absence of any parti-
cular intention or the possession or non-possession by the Defendant
of any particular knowledge have any bearing on the question
whether there has been an infringement of a Patent or not. The
position as to this has been lucidly summed up in the following
remarks : —
“The fact that a man may, while acting in perfect innocence,
yet be guilty of infringement seems clearly recognised by S. 33 ( i.e .
of the English Act) See also Stead v. Anderson (1847) 2. W. P. C. at
p. 156. See also remarks of Erie C. J. in Walton v. Lavater (1860)
29. L. J. (C. P.) at p. 279, and of Parker B., in the H. L. in Heath v.
Unwin (1844), 5. H. L. C. at p. 537. The L. C. in Stevens v. Keating
disapproved of the idea that intention to infringe must be proved,
as appears from the judgment of Shadwcll, V. C. in Heath v.
Unwin (1844) 15 Sim. at p. 533. The contrary view, expressed in
the judgment of the Court of Exchequer in Heath v. Unwin (1844)
2. W. P. C. at p. 227, and by some other judges, of. Seed v. Higgins
(1858) 27 L. J. (Q,. B.)417, Jones v. Pearce (1832), W. P. C.at p. 125,
has never been followed in modern times, and seems utterly opposed
to all principles of English civil law”. 54
Fletcher Moulton at p. 161 note 14.
580 THE LAW OF PATENTS IN INDIA [Ch. XV
As to an alleged defence that the Defendant was acting merely as
an agent of another.
It is obvious that the full liability of infringement attaches to
any dealer who as principal sells in British India goods manufactured
by a third party, if they arc of the nature of infringing goods. Thus
the patentee is in no way confined to a suit against the original
manufacturer. This aspect of the matter is one which it is well for
merchants in India who import and sell goods of other manufacturers
to bear in mind : since it will be no defence for them to plead that
they were not responsible for the manufacture of the goods.
Moreover it is no defence in itself for the Defendant to plead
that he was not acting in connection with the act complained of as a
principal, but merely as an agent for another.
He is not exempt from personal liability for infringement no
matter whether his principal is a person who resides and carries on
business outside British India or within it.
The liability for an act of infringement of a Patent being of a
tortious or semi-criminal character, it is inevitable (subject to what
has been said above as to an innocent infringer) that the person
actually committing the act must be personally liable.
It has been stated however that suits against mere workmen
who innocently help in an infringement, and are not the really guilty
persons, will not be encouraged . 65
As to an alleged defence^ that the Defendant though a principal or
master at whose orders or on whose behalf the act was
done, did not do the act complained of himself.
Where the act of infringement has been done by one person on ‘
behalf of another who is his principal or master, it will be no defence
for the latter to plead that he did not commit the act himself.
A person may infringe a Patent through his agents or ser-
vants . 56 The legal liability of the principal or master has been
stated as follows : —
“Of course a principal may be liable for the infringement of
his agent, and a person may also be liable for infringement if he has
88 See Savage v. Brindle (1896) 13. R. P. 0. 266 at 267 ; also Terrell p. 168.
80 See Terrell (8th edn.) p. 163.
Ch. XV,]
LIABILITY OF PRINCIPAL
58T
really had a hand in the manufacture or sale of the infringing article
though not actually committing these acts himself. Thus the
Directors of a Company were held liable for the infringement by the
servants of the company in the course of their duty, although such
infringement was against their express orders. Apparently the
company were also considered liable, Betts v. De Vitrie (1864) 3 Ch.
App. 441. So where a father had allowed his sons to carry on
business in his name he was held responsible for their infringements ;
Day v. Davies, 22 R. P. C. 42. See also Anderson v. Patent Oxonite
Co. 3. R. P. C. 279 ; Incandescent Gas Light Co. v New Incandescent
Mantle Co. 15. R. P. C. 81 ; Same v. Brogden 16. R. P. C. 179 ;
Sykes v. Hoivarth (1879) 48. L.J. (C.H) 769; but cf Savage v. Bundle
13 R. P. C. 266”. 57
It is submitted that the liability of a person who is cither a
principal or a master of the person who may have actually committed
the infringing act, will be determined by the ordinary principles of
the common law governing the liability of a principal for torts
committed by his agent or of a master for torts committed by his
servant. 58
Defence that the Patent was granted or extended or restoredon
certain conditions and that the Defendant is within those
conditions.
It has already been noted that the Controller is empowered to
make a grant of a Patent under conditions : that is “such conditions
(if any) as the Governor-General in Council thinks expedient”
under Section 10(1). Reference has also been made to the usual
conditions, commonly referred to as the Thompson-Honston condi-
tions, upon which a Patent is usually extended if an order for
extension is made. 58 In such a case if the Defendant is a person
authorised to manufacture or sell or deal with the invention in any
particular respect and if the act complained of as being an in-
fringement is nothing more than his doing what he is entitled to
do under the conditions mentioned, he will clearly have a good
87 Fletcher Moulton at p. 16.
88 Ab to which see Salmond (8th edn. 1934) at. pp. 25, 29, 71 & 79 ; Clerk and
Lindsell (8th. edn.) at p. 64. See also Kestos Ltd . v. Kempat Ltd. and Another
(1936). 53 E.P.C. 139 (where the question of the personal liability of a Director
arose).
88 See page 73 & pp. 519, 526 above.
582
THE LAW OF PATENTS IN INDIA
[Ch. XV
defence to the claim made against him for infringement. Whether
he can establish such a defence will be a question primarily of fact
dependent on the circumstances of the particular case.
Defences relating to rights enjoyed peculiarly by Government.
In certain circumstances where the Defendant is a Government
servant, certain defences may be available which arise under
Section 21 of the Indian Patents & Designs Act of 1911, or where
the Patentee is also a Government servant by virtue of the condi-
tions on which the Patent may have been granted to him by
reason of the conditions of service of a government servant
under Fundamental Rule No. 48A. The circumstances in which
such defences may arise have been indicated in Chapter XIV.
Defence that the Plaintiff was not the registered Patentee at the
date of the institution of the suit.
By Section 29(1) it is provided as follows : —
“29(1). A patentee may institute a suit in a District Court
having jurisdiction to try the suit against any person
who, during the continuance of a patent acquired by
him under this Act in respect of an invention, makes,
sells, or uses the invention without his licence, or
counterfeits it, or imitates it.”
And by Section 2(12) a Patentee is defined as follows : —
“2(12) “patentee” means the person for the time being
entered on the register of patents kept under this Act
as the grantee or proprietor of the patent.”
From the combined provisions of these sections it would
appear that it is a condition precedent to the institution of a suit
for the infringement of a Patent that the Plaintiff should be the
registered Patentee.
In a case where a person entitled to the benefit of a Patent
desires to take proceedings in respect of its infringement but is not
the patentee entered on the register of Patents, it will be advisable
for him to take the necessary steps prior to the filing of his Plaint
to have his name entered on the register as the Patentee and if
necessary to take any proper steps for the rectification of the
register.
A question arises whether the terms of Section 29(1) demand
Ch. XV]
DENIAL OF PLAINTIFF’S ASSIGNMENT
583
that the Plaintiff should in all cases be the registered Patentee at
the time of the institution of the suit or whether a person who was
the registered Patentee at the date of the infringement may never-
theless institute a suit although he is not the registered Patentee
at the date of the filing of the Plaint. Such a case will arise for
example where there has been an assignment of the Patent to another
person since the date of the alleged infringement. It is submitted
that the person who was the registered Patentee at the date of the
infringement may file a suit in his own name in such circumstances
and that in doing so he is not transgressing any of the requirements
of Section 29(1).
A converse of this case arises, where a person, who has by
assignment become the owner of a Patent, may have come to hear of
an infringement of the Patent having been committed at a time prior
to his becoming the registered Patentee. He will then be in the
position of being the registered Patentee at the date of suit, though
he will not have been such at the date of the infringement. Can he
sue ? In such circumstances it may be that ho will have no cause
of action on which to sue ; since it will be unlikely that any right
to sue for prior infringement will have been transferred to him
by his assignment. (Such a defence is indicated under Defence
No. 25 in Chapter XIV). But it may be that by reason of the
particular circumstances of the case he may be able to show that
he has a cause of action for an injunction to restrain the Defendant
from committing any infringement thereafter : even though not
for damages.
The defence that though the Plaintiff is purporting to sue by virtue
of an assignment, there haB in truth been no valid assignment.
It has already been seen that the terms of Section 29 read
with Section 2(12) of the Act restricts the right to institute a suit for
infringement to the person registered as the grantee or proprietor of
the patent. A person may therefore be an assignee by a full and
valid assignment, but if he has not been registered on the Register
of Patents as the registered assignee he will not be competent to
sue.
Since it is provided by Section 20(3) that “the Register of
Patents shall be prima facie evidence of any matters by (the) Act
directed or authorised to be inserted therein”, it follows that if the
584
THE LAW OF PATENTS IN INDIA
[Ch. XV
Plaintiff is the person entered as the registered Patentee on the
Register of Patents, this is prima facie proof of the validity of the
assignment on which he relies.
On the other hand as the effect of Section 20(3) quoted above
is not conclusive as to the validity of any assignment but merely
raises a presumption that such assignment is valid, it would seem
that it will always be open to the Defendant to rebut this presump-
tion and to establish the non-validity of the assignment in the suit
itself.
In some cases it may be advisable for the Defendant to take
proceedings for the rectification of the Register of Patents before
suit in order to have the name of the proper person entered therein
as the registered Patentee.
That is however another matter. What is now being considered
is the validity of the Plaintiff's alleged assignment in itself.
Certain matters affecting the assignment of patents may con-
veniently here be referred to in so far as they are likely to affect a
defence in an infringement suit.
Power of & Patentee to assign his patent.
The grant of a patent being originally personal to the grantee,
it has been held that originally at Common Law a patentee had no
power to assign his patent at all unless expressly authorised to do
so by the Crown.
There was at one time a condition universally inserted in the
grant of all patents to the effect that it would be illegal for the
grantee to assign to a body of more than 5 persons. For a case on
a bond relating to such a patent, see Duvergier v. Fellows. 90
In that case one Jean Jacques Saint Mare was the patentee of a
patent for a process of distillation from potatoes. He and the
Defendant Fellows were carrying on together (in partnership) the
business of a distillery, utilizing the patented process. Being desirous
of selling the business and the patent they entered into an agreement
with the Plaintiff Airne Duvergier to pay him £ 10,000 if he should
obtain purchasers of the Patent and the business. This sum of
flo (1828) 5 Bing. 248 or 133 Eng. Rep. 1056 (in the Court of Common
Pleas) ; the same (1830) 10. B. & C. 826 at p. 829 or 109 Eng. Hep. 655 at p. 657
(in Error) ; the same 1 Cl. & F. 39 or 6 E. R. 831 (House of Lords).
Ch. XV]
POWER OF PATENTEE TO ASSIGN
585
£ 10,000 was to be payable by them in instalments : £ 3,333-6-8 on
the completion of the purchase by the shareholders and payment of
a first call on the shares, £ 3,333-6-8 on payment of a second call on
the shares, and £ 3,333-6-8 on payment of a third and final call on the
shares. The bond was conditioned to become void on the payment
of the full £ 10,000 after performance of his part of the agreement
by the Plaintiff. The Plaintiff sued on the bond. It was held the
bond was unenforceable and void, among other reasons because the
Patent could never have been legally assigned. In his judgment on
the hearing of tho appeal, in error, Littledale J. observed : — “All
monopolies are illegal unless allowed by a patent, which cannot be
assigned at all unless power to that effect is given by the Crown.
The plaintiff, therefore, was bound to see and ascertain that these
patents might be assigned in the manner proposed.”
This ancient principle of the Common Law has long since
come to be of no more than academic interest : since the very terms
of the grant itself, equally in the form now in use in British India as
in that now in use in the United Kingdom, expressly ordains that
not only the Petitioner himself but “his legal representatives and
assigns or any of them” shall have the exclusive privilege mentioned
in the grant. From this it would be clear, even apart from any
further statutory provisions, that at Common Law alone the
Patentee has full power to assign his Patent to whom he pleases.
Further to this there are the express provisions in the Indian
Patents & Designs Act of 1911 contained in Section 63(3) which
give to the registered patentee power “absolutely to assign" his
patent. 61
It is therefore abundantly clear that a patentee in British
India has full power and freedom to assign his patent to whom he
pleases.
When there is more than one co-patentee the question whether
there can be an effective assignment by one patentee only, or
whether all must join in the assignment may depend on the ordinary
fil For sections in the English Act providing for assignments see Section 71(3)
and Section 14(1). In India there is no express provision in Section 12 for such
locally restricted assignments as are provided for in Section 14(1) of the English
Act.
74
586 THE LAW OF PATENTS IN INDIA tCta. XV
principles of law regulating the transfer of a chose in action by
co-owners. 62
Power of assignee to re-assign the patent.
It follows, provided the necessary formalities have been
observed by the first assignee in having himself registered as pro-
prietor of the patent and in completing his title, that this first
assignee can similarly assign the patent again to a second assignee.
There can be no question in such a case, as in the case of the
granting of a sub-licence, whether the original transferor to the
assignee intended him to have the right to assign the patent on to a
third party : for there having been an assignment in the first place
the assignee stands in the shoes of the original grantee of the patent
and is the proprietor in law of the patent and can deal with it as he
likes. He clearly has the same rights to assign as the original
patentee had. Where a question may arise however is where the first
assignment was made, as it may be made, subject to certain condi-
tions : as for example the payment of royalties. Then the first
assignee cannot assign the patent so as to avoid the conditions. The
question may arise in a particular case as to who is responsible for
the performance of those conditions whether the legal obligations
rest only with the first assignee or whether they have passed, on the
second assignment, with the patent, so as to fall on the second
assignee. As a defence in a suit for infringement such matters will
not ordinarily arise ; the only question, if the Plaintiff sues as
assignee and the Defendant disputes his title, will be whether there
has been a valid assignment to the Plaintiff so as to give him a right
to sue or not ; and equally, if the Defendant relies on an assignment
from the Patentee to the Defendant or to a third party the only
question will then be whether there has been a valid assignment from
the Plaintiff so as to deprive him of the right to sue or not.
Writing necessary to effect a transfer of a Patent.
Under Section 9 of the Transfer of Property Act it is provided
that : —
“A transfer of property may be made without writing in every
case in which a writing is not expressly required by
law.”
*£ See also Terrell (8th edn.) at pages 253 & 274.
Ch. XV]
WRITING NECESSARY
087
Section 54 of that act makes writing necessary in the oase of
a sale of a reversion or other intangible thing ; and Section 130
makes writing necessary in the case of all transfers of actionable
claims. It is submitted that a patent is not an intangible thing
within Section 54. The question then is whether a patent is an
actionable claim.
The term “actionable claim” as used in the Transfer of Pro-
perty Act corresponds largely to the term “chose in action” used in
English law. In English law movable property was said to be
either in possession and enjoyment and therefore a chose in posses-
sion ; or out of possession, but realizable by action, and therefore a
chose in action. A chose in action is in English Law a term used to
describe all personal rights of property which can only be claimed
or enforced by action and not by physical possession. In Colonial
Hank v. Wkinney 63 the Court pointed out that the term was
used in different ways to include not only the right to obtain
something not in possession or enjoyment but also certain classes
of incorporeal personal property. It is also used to denote a
document evidencing a right or title. Accordingly choscs in action
include (in English law) debts, benefits of contract, damages for
breach of contract or tort, also stock, shares and debentures and
even such incorporeal rights as patents, copyright and trademarks. 64
From this it is clear that a Patent would be considered under
English Law in the United Kingdom to be a chose in action.
Now the previous definition under Indian law of an actionable
claim was contained in Section 130 of the Indian Transfer of
Property Act. This was clearly intended to include all things which
would have been included in the English term “chose in action” in
the widest use of that term. This previous definition was as
follows : —
“A claim which the civil courts recognise as affording grounds
for relief is actionable whether a suit for its enforce-
ment is or is not actually pending or likely to become
necessary.”
It is clear that a Patent was an actionable claim within that
definition.
** (1885) 30. Oh. D. 261.
64 Bee Mulla’s Transfer of Property Aet (2nd edn. 1936) at p. 688.
588
THE LAW OF PATENTS IN INDIA
[Ch, XV
By the amending Act 2 of 1900 the definition was amended and
removed from Section 130 and placed in Section 3 of the Transfer of
Property Act as thereafter amended. Since the year 1900 the defini-
tion of an actionable claim as contained in Section 3 has been (as it
still is) as follows : —
“Actionable claim” means a claim to any debt, other than a
debt secured by mortgage of immovable property or by
hypothecation or pledge of movable property, or to any
beneficial interest in movable property not in the posses-
sion, either actual or constructive, of the claimant, which
the Civil Courts recognise as affording grounds for
relief, whether such debt or beneficial interest be
existent, accruing, conditional or contingent.”
It must be assumed that the Legislature iutended that the new
definition, though it does not clearly say so, should continue to
include the class of incorporeal personal property (of which a Patent
is an example) to which reference was made in the case of the
Colonial Bank v. Whinney (cited above). Aud it is submitted that
the Court would so hold : that is to say that a patent is an actionable
claim within the definition in Section 3 of the Transfer of Property
Act.
This being so it is necessary, for the reasons already noted,
that an assignment of a patent should be in writing. 05
Registration.
An assignment of a patent is not required to be registered
with any Registrar or Sub-Registrar at any ordinary Registration
office under any provision either of the Indian Transfer of Property
Act or of the Indian Registration Act itself.
Under the Indian Patents & Designs Act itself registration at
na If it were to be held that this is not so, then the position would be that an
assignment of a patent could be validly made orally : just as a partition of joint
family property may be made orally (See (lyannessa v. Mobarakanessa (1898) 25
Cal. 210 : Satya Kripal (1909) 10. Cal. L. J. 503 ; or a surrender of a lease (see
Elias Meyer v Manoranjan (1918) 22 Cal. W. N. 441 : Brojo Nath v. Maheshivar
(1918) 28. Cal. L. J. 220 ; and just as it has been held in the case of the Imperial
Bank of India v. Bengal National Bank by Rankin C, J. (1931. 58. Cal. 136.) that
partitions releases and surrenders are all forms of transfer but so far as the
Transfer of Property Act is eoncerned they come under no restriction.
Ch. XV) REGISTRATION NOT ESSENTIAL TO VALIDITY
589
the Patent office of an assignment of a patent may be effected under
Sections 20 & 63 of that Act. Under Section 20(3) it is provided
in effect that the register of patents shall be prirna facie evidence of
the assignment. Under Sections 63(2) and (3) it is provided in effect
that where an assignment has been registered this is a safeguard
against any purported subsequent unregistered assignment being
relied on ; since the Sections provide in effect that the patentee has
power to effect an assignment only “subject to any rights appearing
from the register to be vested in any other person*'. It is also
provided by Section 63 (4) to the effect that, unless the Court for
reasons to be recorded in writing otherwise directs, no assignment
shall be admissible in evidence unless registered under tho Indian
Patents & Designs Act. The manner and form of registration is
regulated by Rules .54 to 58 of the 1933 Rules. Under Rule 59 it is
provided that the Registers are open to the inspection of the public
at all times on which the Patent Office is open to the public (except
at times when they are required for actual official use). 00 Thus
registration is not essential for the validity of an assignment. For
the reasons mentioned however it is highly advisable that an
assignment should be registered as early as possible. 07
Stamp.
An assignment of a Patent is required under the Indian Stamp
Act (Act 2 of 1899) to be stamped as a conveyance. There is no
provision or article in the Schedule of that act specially applicable
to an assignment of a patent. A definition of a conveyance for the
purposes of that act is contained in Section 2(10) thereof, as
follows : —
“Conveyance" includes a conveyance on sale and every instru-
00 Compare in this connection also the remarks as to registration of licences
above at page 573, in respect of which the position is similar.
n 7 English law.
Under English patent law it is essential for an assignment to create a
legal transfer (for which it is necessary to convey the legal estate) that it should
be by deed ; since that which is created by deed can only be assigned by deed.
See Terrell (8th edn.) p. 254 ; also In re Casey’s Patents , Stewart v. Casey 1892.
1. Ch. 104 (CA) at 113, or 9 R. P. C. 9. It is unnecessary for present purposes
further to consider the effect which an assignment not by deed has by reason of
the doctrine of equitable estates in England. It is clear that the principle that an
assignment must be by deed is not in any case, in view of the statutory provisions
of the Indian Transfer of Property Act for the reasons already discussed,
applicable in India.
590
THE LAW OF PATENTS IN INDIA
[Ch. XV
ment by which property, whether movable or immovable,
is transferred inter vivos and which is not otherwise
specifically provided for by Schedule 1 (or by Schedule
1A, as the case may be)”.
Movable property is defined under Section 3(34) of the General
Clauses Act (Act X of 1897) as meaning property of every descrip-
tion, except immovable property. Whereas “immovable property”
has been defined by Section 3 (25) of the General Clauses Act as
including “land, benefits to arise out of land, and things attached to
the earth, or permanently fastened to anything attached to the earth.”
It is clear that patent rights are property ; and accordingly an
assignment of a patent is a conveyance for the purposes of the Indian
Stamp Act.
The amount of stamp duty payable is to be found stated in
Article 23 of Schedule 1 of the Indian Stamp Act (or of Schedule 1A
in cases relating to Bengal). The amount of duty increases with the
value of the consideration paid and the amount fixed also varies
according to different provinces and in some cases according to
different municipalities. It is necessary therefore to consult that
schedule for every particular case. (For convenience of reference
the article and the different amounts fixed arc noted in Appendix
No. 5 below).
The Controller of Patents has power to impound documents
improperly stamped. 68
- — iy _
*" English law.
Under English law also an assignment of a patent is required to be
stamped as a conveyance on the ad valorem scale imposed by the English Finance
Act. See for example the case of Urban v. Commissioners of India Revenue
in (1912) 29. T. L. R. 141 and on appeal in the same volume at page 476. There
the dispute was as to whether a foreign patent was chargeable or exempt from
the duty payable on the basis of a conveyance : for present purposes the case is
now mentioned as authority merely for the proposition above stated, that duty is
chargeable in England as in India on an assignment of a patent as on a
conveyance. In England under Section 17 of the English Stamp Act of 1891,
the Comptroller is liable to a penalty of £ 10, if he register a document which is
not duly stamped. It has also been held that he may refuse to register a docu-
ment where he is not satisfied that the true consideration is stated on the face of
the document. (See Maynard v. Consolidated Kent Collieries Oorpn. Ltd. (1903)
19 T. L. R. 448). It has been held in England that if the party is dissatisfied
with such order of the Comptroller, the proper course is to refer the matter to the
Ch. XV] EFFECT OF AGREEMENTS TO ASSIGN 591
Mere agreement to assign.
While it is essential, in order that an assignment of a Patent
should be a valid transfer, that it should be in writing so as to
comply with Section 130 of the Transfer of Property Act, there
is no reason why an agreement to assign a Patent, in order to be a
valid and binding contract, should not be made orally.
A mere agreement to assign however, in whatever form, cannot
create anything in the nature of a transfer of the ownership of a
Patent. Thus it cannot entitle a person, in whose favour it is made,
to institute a suit for infringement.
The law in India recognises no distinction between legal and
equitable estates in the sense in which this was understood when
administered by the Court of Chancery in England. See Tagore
v. Tagore (1872) 1. I. A. Supp. 47 at p. 71 : also Webb v. Macpherson
(1904) 31. Cal. 57. 89
Therefore there can be no right of property, equitable or other-
wise, created by any agreement to assign which is not a full validly
legal assignment. The bare agreement to assign creates personal
rights only. It is true that the person to whom the assignment is to
be made can claim damages against the person who has promised to
make the assignment, if he does not implement the contract. But
no one who is not a party to the agreement is affected by it in
any way. 70
It follows that a person to whom the Patentee has merely
orally agreed to assign the Patent, clearly has no title to the Patent
Commissioners of Inland Revenue for their ruling. See R v. Registrar of Joint
Stock Companies . (1888) 21. Q. B. D. 131.
89 See also Surendra Mohan Ray Chaudhuri v. Mohendranath Ranerji (1932)
59. Cal. 781.
,u English law differs.
The legal position appears to be difTerent in England where by reason of
the creation of an equitable estate it would appear that, where there has been
prior to the existence of the Patent an agreement to assign, a right of
property in a patent may pass in equity to an assignee an soon as the patent
comes into existence or is acquired by the assignor. For a case of such a nature
in England, where it was observed by Viscount Cane, L. C. that “when a person
executes a document purporting to assign property to be afterwards acquired by
him, that property on its acquisition passes in equity to the assignee'’, see
Performing Right Society v. London Theatre of Varieties 1924. A. C. 113. As
already noticed, it is submitted that the principle and decision of that case is not
applicable in India.
502
THE LAW OF PATENTS IN INDIA
[Ch. XV
and no right to sue. For a transfer of a Patent can only be legally
effected in writing. It is submitted that the position will be the
same if the Plaintiff is a person to whom the patentee has merely
agreed to assign the patent, even though the agreement be in writing,
if the matter rests at the stage of a bare agreement only, and if the
assignment has not come into effect so as to create a legal transfer
of the Patent before suit.
Purported assignment of patent in futuro.
Under Section 5 of the Transfer of Property Act (Act IV of
1882 as amended by Act XX of 1929 and by Act V of 1930) it is
provided in effect that property of any kind can be transferred.
It has been held however that the words “in present or in future”
of that section govern the word “conveys” used in the section and
not the word “property” immediately preceding them ; and that
property not in existence cannot be transferred. 71
In India therefore, it is submitted, whether there is a purported
assignment of, or a mere agreement to assign, a Patent which is not
in existence but is to come into existence at a future date or is to
be afterwards acquired, the effect will be the same : and the assignee
will get a personal right only against the assignor which he can only
specifically enforce against the assignor as soon as the property
comes into existence. 72
Bare Assignment of a patent does not ordinarily transfer a right,
previously accrued, to sue for a past infringement.
One other point that it may be convenient to note here is that
a bare assignment of a patent will not, ordinarily, in the absence of
express special stipulations, effect any transfer of a right to sue for
an infringement committed before the date of the assignment. This
being so, a Plaintiff, even though he be a registered patentee, if he
relies on an assignment for his title to the patent, will not be entitled
to sue for any alleged infringement which may have taken place
prior to the date of such assignment. It will accordingly, in such a
case, be a complete defence for a Defendant to plead, while admitting
the validity of the assignment of the patent to the Plaintiff, that the
alleged infringement took place prior to the date of such assignment.
71 Malta's Transfer of Property Act (2nd edn. 1936) at p. 48 but see In re
Mahomed Hasham rf; Co. (1922) 24. Bom. L. B. 861 at p. 871.
7 a See Malta's Transfer of Property Act (1936 edn.) at pp. 42 and 45.
Ch. XV] DEFENCES OF DENIAL OF THE ACT 593
This point, that an assignment of a patent would not per se
carry an accrued right of action for infringement was expressly
decided in Wilderman v. F. W. Berk Co. Ltd . 73 That was
a case, in which it was found as a fact that the Plaintiff was a hostile
person, so that, under the Trading with the Enemy Amendment
Acts, the Patent had on 20th October 1918 vested in the Custodian
for England and Wales appointed under those Acts ; and was so
vested at the date of the alleged infringement, which was in Novem-
ber or December 1919. And it was held on this ground, apart from
others, that though there had admittedly been a valid assignment
from the custodian back to the Plaintiff by operation of the statute
at a date (that is 20th July 1920) subsequent to the alleged infringe-
ment, the Plaintiff as such assignee had no right to sue in respect
of an alleged infringement which had admittedly occurred prior to
the assignment to the Plaintiff.
Defences of denial that the act complained of was committed : at
all : or by the Defendant : or by his agent : or by any person
for whose act the Defendant will be liable.
The nature of the liability of a principal for an infringement
committed by his agent (and of a master for his servant) has already
been discussed 74 and it has been noted that he may none the less be
liable if he was responsible for the commission of the act complained
of even though it was not in fact done by him.
The defences referred to under Nos. 27 & 28 in Chapter XIV
relate to pure questions of fact : in effect that the Plaintiff’s case is
a false case. They call for no further comment here.
’* (1925) 42. R. P. C. 79 at p. 90.
See page 580 above.
75
T 4
CHAPTER XVI
INFRINGEMENT CONTINUED— DEFENCES IN RELATION TO
THE SPECIFICATION— DEFENCES OF INVALIDITY :
DEFENCE THAT DEFENDANT'S ARTICLE OR
PROCESS IS OUTSIDE THE MONOPOLY
DELIMITED IN PLAINTIFFS SPECI-
FICATION : LORD MOULTON'S
DEFENCE
Conditional nature of the grant ot a Patent.
Ever since the Statute of Monopolies (and indeed, as that
Statute was merely declaratory of the Common Law, even before
that, from earliest times) the grant by the Crown of a Patent has
always been but a conditional grant : conditional, that is to say,
in the sense that the grant is to come to nothing in the event of
its being afterwards found that the Crown had no power to grant
it or that other reasons exist for the revocation of the grant . 1
It is for this reason that the wording of the grant of Letters
Patent in England is made conditional in the following words : —
“Provided always that these letters patent shall be revocable
on any of the grounds from time to time by law pres-
cribed as grounds for revoking letters patent granted
by us and the same may be revoked and made void
accordingly ,” 2
And it is for this reason also that the Indian form for the
grant of a Patent likewise contains a clause the effect of which is
the same : viz : —
“Subject to the conditions that the validity of this patent
is not guaranteed by Government .” 3
In these circumstances it follows that, when a person is sued
for infringement of a Patent, it becomes open to him always to take
4 See pages 24, 30, 58, 109 ante.
* See page 24 ante.
8 See page 30 ante.
Ch. XVI]
CONDITIONAL NATURE OF THE GRANT
695
as a defence the plea that the Patent of the Plaintiff, though it has
been granted and registered, is in fact invalid. For if there is no
effective Patent there assuredly can be no infringement of it.
The various objections against the validity of a Patent whioh
may be raised at one stage or other of its currency have been already
fully discussed in the earlier Chapters VI, VII and VIII. It remains
however to be considered whether all or if not all, then which, of
those objections may be raised by a Defendant at the stage when
an infringement suit has been brought against him, as a defence
to such a suit. Out of all the defences on the ground of invalidity
discussed in Chapters VI, VII & VIII those which, it is submitted,
are available to a Defendant in an infringement suit have been
briefly noted under the Nos. 29 to 40 in Chapter XIV. Before
proceeding to a consideration of any further points which may call
for comment in connection with those defences and in connection
with the remaining defences Nos. 41 to 44, which it is proposed to
do in this Chapter, it will first be convenient to note under what
authority the defences mentioned under Nos. 29 to 40 in Chapter
XIV are available to a Defendant in an infringement suit and the
reasons why those defences only and not other defences for invalidity
are available at such stage.
The Defences of invalidity available to a Defendant in a suit for
infringement in India.
Under Section 29(2) of the Indian Act of 1911 it is provided
as follows : —
“Every ground on which a patent may be revoked under this
Aot shall be available by way of defence to a suit for infringement.’'
Various grounds of invalidity made available under Section 29(2)
read with Sections 22, 23 & 26.
The grounds on which a Patent may be revoked by petition to
a High Court ate contained in Section 26 of the Indian Act. It is
dear therefore that all the grounds of invalidity set out in Section
26 are available by way of a defence in an infringement suit.
In addition however to revocation by petition to a High Court
under Section 26, revocation may also be obtained under the Act
by petition to H. E. the Governor-General in Council under SeotionB
22 and 23. It follows equally under the terms of Section 29(2),
596
THE LAW OF PATENTS IN INDIA
[Ch. XVI
that such grounds as are available for the obtaining of the revoca-
tion of a Patent under Sections 22 and 23, that is to say the grounds
of the abuse of the monopoly by inadequate supply or non-manu-
facture in British India are also available by way of a defence in
an infringement suit. 4
But it should be noted that, since a case based on the abuse
of the monopoly of the Patent cannot be agitated as a ground for
revocation on a Petition before H. E. the Governor-General in
Council until the period of 4 years referred to under Section 22
and Section 28 respectively has elapsed, so also such a ground, it
is submitted, cannot be raised as a defence by a Defendant in a suit
for infringement unless such period of 4 years has elapsed.
Enumeration of the defences which under Secs. 22, 23 and 26 are
expressly laid down as available in British India.
The grounds of invalidity, which arc expressly mentioned
under the Act of 1911 as being defences to a suit for infringement
in British India when collected from Secs. 22, 23 and 26 are as
follows : —
(i) That the demand for the patented article in British India is
not being met to an adequate extent and on reasonable
terms : after 4 years : [Under Section 22.]
(ii) That the patented article or process is manufactured or
carried on exclusively or mainly outside British India :
after 4 years : [Under Section 23.]
(iii) That any invention included in the statement of claim
. . is of no utility : [Under Section 26 (1) (a).]
(iv) That any invention included in the statement of claim
was not, at the date of the application for a patent, a
nCw invention within the meaning of the Act : [Under
Section 26 (1) (b).]
(v) That the applicant was not the true and first inventor
thereof or the assign or legal representative of such
inventor thereof : [Under Section 26 (1) (c).]
* For authority that such grounds (*.e. the abuse of the monopoly) have
been held in the United Kingdom to be available under the English Act as a
defence to an infringement suit see the cases already cited at page 333, note 25,
above.
DEFENCES UNDER THE ACT
597
Cfc XVI]
(vi) That the original or any amended application or speci-
fication does not fulfil the requirements of (the) Act :
[Under Section 26 (1) (d).]
(vii) That the applicant has knowingly or fraudulently
included in the application for a patent or in the original
or any amended specification, as his invention, something
which was not new or whereof he was neither the
inventor nor the legal representative of such inventor :
[Under Section 26 (1) (e).]
(viii) That the original or any subsequent application relating
to the invention, or the original or any amended speci-
fication, contains a wilful or fraudulent mis statement :
[Under Section 26 (1) (f).]
(ix) That the whole or a part of the invention or the manner
in which the whole or a part is to bo made and used as
described in the original or any amended specification,
is not thereby sufficiently described, and that this
insufficiency was fraudulent or is injurious to the public.
[Under Section 26 (1) (g).]
Preliminary comments.
The wording of the grounds as stated in Section 26 is highly
unsatisfactory. A comparison with the grounds mentioned in
Section 25 of the English Act of 1907-1932 will show how much
more precise, and more comprehensive is the wording of the grounds
as stated under the current English Section.
In regard to certain of the grounds as at present worded under
the Indian Section, as it stands, it is difficult to say whether a parti-
cular ground is intended to refer to an objection for want of subject
matter or want of novelty or for insufficiency of description or for
fraud or for what. It seems hardly likely that a sub-section was
intended only to be applicable if every one of these objections in a
peculiar combined degree was present. Sub section (e) is an
instance of such a mixed and ambiguous statement, of which it is
extremely difficult to analyse the precise meaning.
In view of this unsatisfactory wording of Section 26 as at
present framed it is not proposed here to comment individually or
seriatim at any length on each separate sub-section. Instead of
THE LAW OF PATENTS IN INDIA
[Oh. XVI
examining each separate ground and considering its meaning it is
proposed to adopt a reverse process for an analysis of the Section.
Since all the several objections for invalidity which may be agitated
against a Patent at any time of its life have already been reviewed
individually, it is proposed here merely to consider each of those
objections as stated :in the earlier Chapters VI, VII & VIII, seriatim ,
and to attempt to arrive at an opinion as to whether all or if not
all, then which, of those objections may be treated on a proper
construction of Sections 22, 23 and 26 as being included in the nine
grounds indicated above which are expressly laid down under the
Act as available defences in a suit for infringement in British India.
Summary of grounds directly within Section 26(1).
The grounds, which, will on such an analysis be found to be
directly within Sec. 26(1) as being open to a Defendant to take in a
suit for infringement in British India are as follows : —
Want of subject matter in that the alleged invention is not a
manner of manufacture : —
This is made available as a defence under Sec. 26(1) (b) read
with Sec. 2(8).®
Want of subject matter in that there was in the alleged invention
no inventive step : —
This objection is nowhere in Section 26(1) mentioned as a
separate ground of invalidity. But it is submitted that it may be read
into the Section as being covered or implied by Section 26(1) (b)
read with Section 2(8), or possibly even by Section 26(lKd). The
position is however not at all clear on the faoe of. the wording of
Section 26 alone.®
As to want of subject matter in that the use of the invention will
be illegal : —
This objection is not mentioned in Section 26(1) nor does it
appear to be included by implication. 7
• Bee page 164 and page 543 above.
* Bee page 165 and page 543 above.
7 . See page 166 and .page 543 above.
Ch. XVI]
GROUNDS OF INVALIDITY
599
As to want of subject matter in that the use of the invention will
be contrary to morality : —
This objection is not mentioned under Section 26(1) nor does
it appear to be included by implication. 8
As to toant of subject matter in that the invention is unfit to be
the subject of the exercise of the Crown’s prerogative : —
This objection is not mentioned under Section 26(1) nor does
it appear to be included by implication. 9
Want of novelty : —
This is available to a Defendant as a defence in any category :
under Section 26(l)(b). 10
N.B. As to invalidity by reason of a prior grant : — Section 26(1 )
contains no express mention of this objection. It might of course be
urged at first sight that Section 26(l)(b ) in its words “a new invention
within the meaning of this Act’’ covers an objection for prior grant as
well as all objections for want of novelty in the strict sense. Unfor-
tunately in view of the definition of a “ new invention** contained in
Section 38 of the Act , such a construction on further investigation
hardly seems accurate or possible .“
Want of utility : —
This objection is expressly made available under Sec. 26(l)(a). 12
Insufficiency of description : —
This objection is available under Sec. 26(l)(g) within the res-
tricted conditions of that sub-section : i.e. provided fraud or injury
to the public is shown. 19
The objection that the Applicant was not the true and first inventor-.—
This objection is expressly made available uuder Sec.
26(l)(c). M
Fraud -. —
Fraud is expressly referred to under Sec. 26(l)(e) and
* Bee page 166 and page 543 above.
* Bee page 166 and page 543 above.
u Bee page 216 and page 544 (Nos.. 31 & 32) above.
11 Bee page 217 and page 544 above.
** See page 223 above : also p. 544.
19 See page 247 above : also p. 544.
14 See page 257 and page 544. .
600 THE LAW OF PATENTS IN INDIA [Ch. XVI
Sec. 26(l)(f) ; and as such is available as a defence in an infringement
suit.* 6
N. B. As to the objection that the applicant for Patent obtained
the invention from the Defendant (or from a person of whom he is
the legal representative or assign ): — This objection is not separately
referred to either expressly or impliedly among the grounds of
invalidity mentioned in Section 26(1)}*
Summary of grounds directly within Section 22 & Section 23.
Objection for abuse of monop jly : —
As already indicated the objection (after 4 years) that a Patent
is invalid on the ground that the demand for the patented article
is not being met to an adequate extent and on reasonable terms is
expressly made available to a Defendant as a defence in an infringe*
ment suit by virtue of Section 29(2) read with Section 22.
Similarly the objection (after 4 years) that a Patent is invalid
on the ground that the patented article or process is carried on
exclusively or mainly outside British India is expressly made
available to a Defendant as a defence in an infringement suit by
virtue of Section 29(2) read with Section 23.”
Whether any other grounds by implication may be added as being
available to a Defendant as a defence in an infringement suit.
One ground not among the summary given above which, it is
submitted, is available to a Defendant as a defence in an infringe-
ment suit in British Ihdia is the objection of a prior grant. It is
submitted that this objection must be available on general principles
to a Defendant in an infringement suit, since it cannot be legal or
feasible for the Crown to make the same grant for the same mono-
poly twice over.
As to the objection of “obtaining”, it will doubtless be found
that almost every case in which such an objection might have been
raised, if the defence had been available in the form in which it is
available in England under the English Section 25(2)(c), will equally
afford grounds of invalidity under the more general ground that the
Applicant for Patent was not the true and first inventor. The
14 See pages 259, 266 and page 544.
14 See page 263, page 267 and page 544 above.
See page 333 and page 545 above.
11
Ch. XVI]
GROUNDS AVAILABLE UNDER THE ACT
001
objection of “obtaining" docs not appear to be available as a separate
defence under the terms of the current Indian Act of 1911.
Beyond those objections which have now been mentioned it
would not appear that a Defendant can rely as a defence in a suit
for infringement on any other defence as being available to
him under the terms of Section 29(2) read with Sections 22, 23
and 26 either expressly or by implication, or under the Act of 1911
generally, on any proper construction thereof.
From what has been said it will be seen that the statement
of the defences under Nos. 29 to 40 in Chapter XIV may be used
as a workable summary of the various defences on the ground of
invalidity, which may be taken to be in practice open to a Defen-
dant in an infringement suit under the Act of 1911 as it now stands.
Since all such objections for invalidity have already been discussed
in Chapters VI, VII and VIII reference may be made to those
chapters for what will and what will not constitute an effective
objection on any particular one of the grounds enumerated.
Estoppel.
A question may arise in certain circumstances whether there is
an effective estoppel such as to bar the Defendant from raising the
question of the invalidity of the Plaintiff's Patent.
It is well established that in a suit by a Patentee for royalties
a licensee is estopped entirely from raising any question of the
invalidity of the Patent against the Patentee from whom he has
obtained his licence during such time as such licence is current. (See
Halsbury (Hailsham cdn.) Vol. 13, Art. 586 and cases there cited.)
But a person who may once have been a licensee is not, it is
submitted, fettered by any such estoppel after the licence has been
determined. See Ooucher v. Clayton 18 . In that case the Defendant
Firm on being sued for infringement in a previous suit had consen-
ted to judgment and immediately thereafter had obtained from the
Patentee (who had been the Plaintiff in that suit) a licence for a
certain term. The term of the licence expired. The Patentee then
brought a second suit for infringement against the Defendants. In
this second suit various other points were raised apart from the
question of the licence : but the case appears to be authority for the
(1865) 34. L. J. Ch. 239.
76
18
THE LAW OF PATENTS IN INDIA
[Ch. XVI
proposition that the Defendants were entitled to take a plea that
the Patent was invalid and were not estopped from doing so merely
by the fact that they had at one time been licensees under a licence
which had expired before suit . 19
And a person who may be the holder of a licence to make or
do certain things is not fettered by any such estoppel in the event of
his being sued for infringement in respect of things made or done
by him which are outside the licence granted to him : or, in a case
where the licence is restricted to a certain geographical area, in
respect of acts done outside that area. See Fuel Economy Company
v. Murray . 20
The point was moreover expressly referred to in the judgment
of Luxmoore J. in the last mentioned case in the following passage : —
“The fact is that the action does not relate to anything which has
been done under the licence, nor does the defence set up the licence
as an answer to the claim for infringement. There is, of course, a
well recognized rule that a licensee cannot attack the validity of a
patent which is the subject of his licence, and Mr. Moritz quoted
to me a passage from the judgment of James L. J. in Adie v. Clark 21
where he said this : “A licensee cannot, under any pretence whatever,
bring his licensor into litigation as to the novelty of any part of
the patent.” I think that statement must be read in relation to the
subject-matter of the proceedings in which it was made. The action
was an action for specific performance of an agreement to take a
licence and for an account under such licence of the articles made
by the Defendant. The reason why a licensee cannot dispute the
validity of the patent in respect of which a licence is granted arises
out of the relationship of the parties, the licensor and the licensee,
which creates an estoppel. Estoppel can only operate in the same
transaction as that in which it arises. In an action under a lease,
the lessee cannot challenge the lessor’s title to property which is
included in the lease, because the title to that is not in issue ; and
the caso of a licensee who has a licence to work a patent is to that
extent analogous to that of a lessee under a lease. A licensee cannot
18 See also Fulton on Patents, Trade Marks and Designs (3rd edn. 1905)
at page 202.
*» 1930 2. Ch. 93 (C. A.)
•» 3 Ch. D. 134 at p. 144.
Ch. XVI]
AS TO ESTOPPEL BY LICENCE
603
challenge the validity of a patent in an action under the licence, the
lioenoe being admitted by the licensee, because the title is not in
issue. But in an action for infringement a different set of circums-
tances arises altogether. It is not an action under the licence at
all, and in such a case, in my judgment no estoppel arises. If this
were an action under the licence, for example, to recover royalties
in respect of articles made under the patent in the limited area, of
course, the Defendant, as licensee, would be estopped from challeng-
ing the validity of the patent, the licence being admitted by him,
no matter how obviously invalid the patent might bo. But, in my
judgment, such an estoppel cannot arise in an action for infringe-
ment. In the present case, so far as the infringement complained
of is concerned, the licence has no bearing on the case, and is really
irrelevant to the plea.”
In view of the clear reasons stated and of the very definite
pronouncements in this judgment in the last-mentioned case, it is
submitted that the true legal position is that in a suit for infringe-
ment, a Defendant, since the claim is not made against him in any
respect qua licensee, will never in any circumstances be fettered
by any estoppel arising out of any licence, which he may have held
in the past or may hold at the time of the suit, such as to prevent
him from raising by way of defence to the claim for infringement
the invalidity of the Plaintiff's Patent.
A question of estoppel by judgment may also arise owing to
previous litigation : the question then being whether the validity
of the patent is res judicata by reason of some decision in a previous
suit so as to bar the Defendant from relying on a defence of
invalidity in the infringement suit which is being heard. Where
the parties and the matters in issue are the same in the infringement
suit being heard as in the previous litigation there may clearly be a
res judicata and an estoppel binding on the parties as to the validity
of the Patent, where this has been in issue. The point will be
governed in India by Section 1 1 of the Code of Civil Procedure
(Act V of 1908). The principles there laid down do not, it would
seem, differ from the law as to res judicata in the United Kingdom.
For a case in which an estoppel by judgment, or res judicata, was
held to be oreated in regard to the issue of the validity of the
Patent in question, reference may be made to the case of Poulton
604 THE LAW OF PATENTS IN INDIA [Ch. XVI
v. Adjustable Cover <& Boiler Co. and certain passages in the
judgments therein which are cited below.
A further point whether there was in the circumstances of
the particular case an estoppel against an estoppel, also arose in
Poulton v. Adjustable Cover & Boiler Block Co . 22
In this case the facts were these. The Plaintiff in this suit
sued for infringement of his patent. The Defendants took a defence
of invalidity for want of novelty and prior user, but the defence
failed, the patent was held valid and the Plaintiff obtained judgment
with a decree for a permanent injunction and an order for an inquiry
as to damages. After this decision but pending the inquiry ordered,
the Defendants having come to know of further instances of prior
user, filed a Petition for the revocation of the Patent. This Petition
was successful and the Patent was revoked. On the hearing of the
inquiry the double point then arose whether the Defendants were
estopped from raising the invalidity of the Patent by reason of the
decree in the suit by which it had been adjudged valid : or whether
the Plaintiffs were estopped from setting up the validity of the
Patent and from denying its invalidity by reason of its having been
adjudged invalid and revoked on the Petition for revocation.
It was held by Parker J. in the first place, that there had been
an estoppel created by reason of the decree for an injunction and
for the inquiry as to damages (being an adjudication that the patent
was valid) which estoppel would ordinarily act against tho Defendant
so as to bar him from setting up on the inquiry the invalidity of
the patent. On this point the learned judge made the following
definite pronouncement : —
“Now I think that on principle it is absolutely clear that a
judgment for an injunction and an inquiry as to damages in an action
for infringement docs estop tho Defendant from setting up, on the
inquiry, the invalidity of the letters patent. So far as the Defendant
is concerned, he is estopped from denying the validity of the letters
patent at the date of the trial, which is the date with reference to
which the inquiry as to damages is directed, and, of course, estopped
from denying their validity at the date of the infringement in
respect of which the inquiry as to damages is directed.”
a# 1908. 2 Ch. 430.
Ch. XVI]
ESTOPPEL BY JUDGMENT
805
The principle enunciated was confirmed with equal force in
the Court of Appeal, the following observations being made on the
point by Vaughan Williams L. J. : —
,l The Plaintiff in an action for infringement of a patent
obtained judgment against the Defendants, and, as consequential
upon that judgment, an order for an inquiry as to the amount of
damages which the Plaintiff had sustained by reason of the Defen-
dants' infringement of his patent. In my opinion the judgment so
obtained by the Plaintiff made the question whether there had been
au infringement by the Defendants of a patent then valid, which
had been granted to the Plaintiff, res judicata as between the parties
to the action, and, operated as a complete estoppel between them.”
The matter was put by Buckley L. J. thus : —
“In this case, the Plaintiff, a patentee, brought an action
against the Defendants for infringement of his patent. In that
action he succeeded, and obtained an order, the substance of which
was that it decided that the patent was valid, and that there must
be an inquiry as to the damages sustained by the Plaintiff through
the wrongful infringement by the Defendants of his valid patent.
That was, in my opinion, a complete judgment, constituting the
matters so decided as between the parties res judicata , and operating
as an estoppel upon the Defendants as regards those matters for all
purposes, except that, of course, the Defendants might appeal against
it, and that it did not estop them from presenting a Petition for the
revocation of the patent.”
The next question that logically arose was whether the order
for revocation, made in the Petition for Revocation had the force
of a judgment in rem so as to act as a further estoppel, so that
there being, within the words used by Lord Coke, “an estoppel
against an estoppel”, the matter would be at large . 23
The decision of this point involved the further question how
far the order for revocation was to be given effect to as a judgment
in rem .
The Court of Appeal, affirming the decision of Parker J., held
that the estoppel created by the judgment continued and was
unaffected by the order for revocation.
fa See 1908. 2 Oh. at p.432.
606 THE LAW OF PATENTS IN INDIA [Ch. XVI
Jt was further held by Fletcher Moulton L. J., in effecti that
while the order of revooation was in the nature of a judgment in
rent, yet its effect was merely to terminate the res , i.e. the letters
patent, at the date when the order for revocation was made ; and
that it had no further effect so far as estoppel was concerned. 24
No estoppel from infringement suit such as to bar subsequent Peti-
tion for Revocation filed on behalf of the public.
The reason why in the last mentioned case the judgment did
not estop the Defendants from thereafter presenting a Petition for
Revocation is explained parenthetically in the judgment of Buckley
L. J. where at p, 440 he points out that the Defendants in presenting
the Petition were suing in the capacity of members of the public
representing the public and not as private individuals which was
the capacity in which they had been sued in the infringement suit.
This principle appears to be well settled that where there has
been, in an infringement suit a judgment holding the Plaintiff’s patent
valid against the Defendant, this will not operate as any estoppel to
prevent the same person who was a Defendant in that suit from
thereafter filing a Petition for the Revocation of the same Patent
provided he files such Petition after obtaining the fiat of the Advo-
cate-General and as a member of the public and on behalf of the
public and not in his private capacity.
For other cases in which the same point has been decided see
Deeley’s Patent ; also 'Shoe Machinery Co. Ltd. v. Cutlan ; also
Jameson’s Patent . 25
It is submitted however that if there has been a suit for in-
fringement and the Plaintiffs patent has in that suit been held
valid against the Defendant, and if thereafter the same Defendant
were to seek to file a Petition for revocation in his private capacity
without obtaining the fiat of the Advocate-General (as in certain
circumstances he might ordinarily be entitled to do), then the
14 Bee 1908 2 Ch. at p. 439 ; also the observations of Parker J. at p. 435 ibid.
And further as to estoppel generally in patent suits Bee Fletcher Moulton at
p. 206 .
*• i.e. (1895) 21. R. P. C. 192 at p. 199 ; (1895) 12. R. P. C. 630 (C.A.)
at p. 533 ; and (1902) 19. R. P. C. 246 at pp. 248 and 252 ; respectively. Also see
at p. 443 above.
Ch. XVI]
QUESTIONS OF SIMILARITY
607
ordinary principle of estoppel would operate. In those circumstances
the position would be distinguishable from what was found to be the
case in Boulton v. Adjustable Cover &• Boiler Block Cb.,and the party
who had been the Defendant in the infringement suit would actually
be estopped from proceeding in his Petition for Revocation.
The defence that the alleged infringement is not covered by the
claims of the Plaintiff’s Specification.
Before turning to a consideration of the principles on which
a Specification is required to be construed it is convenient first to
note certain subsidiary points which arise regarding the degree of
similarity (or identity) which is necessary to be established between
the infringing article or process of the Defendant and the invention
of the Plaintiff as found to be described in his Specification. The
question in each case comes to this : after it has been ascertained
precisely what is the Defendant’s article or process (as made or
sold or used by him) and after it has been ascertained precisely
what is the Plaintiff’s patented article or process (as described in
his Specification), is the one article or process so sufficiently similar
(or identical) with the other as to constitute an infringement ?
Question of similarity a question of fact.
This question though dependent on preliminary questions
arising on the construction of the specification is a question, finally,
of fact. It comes to this : whether the invention of the Defendant is
identical in essence with the invention of the Plaintiff. For this reason
it is most important to observe, before entering upon any consider-
ation of the cases on this point, that the decisions to be found in the
cases on the subject are only of interest as a guide ; and as showing
what decisions have actually been arrived at in different particular
cases. The decision of every case will go entirely on the particular
facts of the particular case. The decision in a previous case cannot
be of any binding authority in any other case. At the same time it
is clear that the Courts will do their best to avoid giving a decision
one way on a particular set of facts in one case and a decision
another way in another case where the material facts are to all
intents and purposes the same. Such a state of things would bring
about so much uncertainty in the administration of the Patent
system as to create much unnecessary loss and difficulty both to
606
THE LAW OF PATENTS IN INDIA
[Ch. XVI
inventors and to the public. A consideration of the decided cases
on this point is and will continue to be, therefore, of considerable
practical interest.
Similarity. Imitation seldom completely identical.
In nearly every case it will be found that the Defendant has
made some variation in one or more of the parts or elements of his
product in which it differs from the precise invention of the Plaintiff.
It is seldom if ever that the Plaintiff’s invention is completely and
slavishly copied. The question is whether that which is different
is of a vital nature or not : or conversely whether that which is
not different is of the essence of the invention.
As to this, the matter was well stated by Wills J. in the follow-
ing words : —
“Infringement is a question of fact for the jury, if there be
one ; and the question is not whether the substantial part of the
process, said to be an infringement, has been taken from the speci-
fication : but the very different one, whether what is done, or pro-
posed to be done, takes from the patentee the substance of his
invention. What the thing invented is, must be gathered from the
specification alone, and the patentee cannot escape from the thing
he has claimed as the standard, and the only standard, with which to
compare the alleged infringement, so as to sec if it constitutes subs-
tantially the appropriation of the thing claimed. When, however, you
come to make that comparison, how can you escape from considering
the relative magnitude and value of the things taken and of those
left or varied ? It is seldom that the infringer does the thing, the
whole thing, and nothing but the thing claimed by the specification.
He always varies, adds, omits ; and the only protection the patentee
has in such a case lies, as has often been pointed out by every Court,
from the House of Lords downwards, in the good sense of the
tribunal which has to decide whether the substance of the invention
has been pirated. It is contended by the Defendants that what
is important and what is of subsidiary consequence, can only be
gathered from the specification itself. I am satisfied that neither is,
nor can be, the law. Certainly Budgeon v. Thomson (L. R. 3 App.
Cas. 34) that which was cited as an authority to that effect, says
nothing of the kind. “Additions or subtractions”, says Lord Cairns,
“may exist and yet the thing protected by the specification may
Ch. XVI]
“PITH AND MARROW”
609
be taken notwithstanding." There are no means of ascertaining
whether, notwithstanding additions or subtractions, the invention
has been taken, except by seeing what they are worth as compared
with the things which have been taken bodily from the invention ." 26
Similarity. If the essence of the invention is copied this is
infringement.
The Court will hold the Defendant to have infringed no matter
what minor differences there may be, if he has taken “the pith and
marrow" of the invention ; to use a phrase which has been much used
in the English cases. In a passage dealing with this point Lord
Cairns L. G. stated as follows : —
“One mode of infringement would be a very simple and clear
one ; the infringer would take the whole instrument from beginning
to end About an infringement of that kind no question could
arise. The second mode would be one which might occasion more
difficulty. The infringer might not take the whole of the instrument
here described, but he might take a certain number of parts of the
instrument described ; he might make an instrument which in many
respects would resemble the patent instrument, but would not
resemble it in all its parts. And there the question would be, either
for a jury or for any tribunal which was judging of the facts of the
case, whether that which was done by the alleged infringer amounted
to a colourable departure from the instrument patented, and whether
in what he had done he had not really taken and adopted the subs-
tance of the instrument patented. And it might well be, that if the
instrument patented consisted of twelve different steps, producing in
the result the improved clipper, an infringer who took eight or nine
or ten of those steps might be held by the tribunal judging of the
patent to have taken in substance the pith and marrow of the inven-
tion, although there were one, two, three, four or five steps which he
might not actually have taken and represented upon his machine ". 27
Improvement by Defendant in such case immaterial.
A delusion may exist that because the Defendant's article
presents advantages over the Plaintiff's invention, this fact in itself
negatives infringement. That is not so. As was said by Bowen
a * See the Incandescent Gas Light Co. Ltd. v. The De Mare Incandescent Gas
Light System Ltd. (1896) 13 R.P.C. 301 at p. 330.
*» See Clark v. Adie (1877) 2. A. C. 315 at p. 320.
77
610
THE LAW OF PATENTS IN INDIA
[Ch. XVI
L. J. in Wenham Gas Co. v. Champion Gas Lamp Co. “if the pith
and marrow of the invention is taken the superadding of
ingenuity to a robbery does not made the operation justifiable.” 28
Similarity. When the monopolised invention concerns a new
product as well as a new means.
When the Plaintiff's invention is of this nature, the Court will
look with a jealous eye on infringers. In a case of this nature any
other machine for effecting the same object may well be considered
to be taking some of the essence of the Plaintiff's invention. (See
the further remarks in the next paragraph).
Similarity. Where the Plaintiff's monopoly is for a new means
only of attaining a well known product or object.
In this case the field of the monopoly being smaller, infringe*
ment is less easily established : the essence of the invention being
confined to the particular means stated in the specification for
achieving the object, there can be no infringement unless a substan-
tial part of those means and none other find a place in the article or
process used by the Defendant. The difference between what is the
essence of the Plaintiff’s invention in this case and in that referred to
in the last preceding paragraph can be well judged from the follow-
ing passage of the judgment of Wood V. C. in Curtis v. Plait :
“Where the thing is wholly novel, and one which has never
been achieved before, the machine itself which is invented necessari-
ly contains a great account of novelty in all its parts, and one looks
very narrowly and very jealously upon any other machine for effect-
ing the same object, to see whether or not they arc merely colourable
contrivances for evading that which has been before done. When
the object itself is one which is not new, but the means only are new,
one is not inclined to say that a person who invents a particular
means of doing something, that has been known to all the world
long before, has a right to extend very largely the interpretation of
those means which he has adopted for carrying it into effect.
Because otherwise, that would be to say that the whole world is to
be precluded from achieving some desirable and well-known object
which everybody has had in view for years. 2 *
" (1892) 9 R.P.C. 49 (C. A.) at p. 56 see also Terrell (8th edn.) at p. 158.
*• Sec 3 Ch. D. 136 n : and see Terrell (8th edn.) at p. 156.
Ch. XVI]
DOCTRINE OF EQUIVALENTS
611
Similarity. Doctrine of equivalents.
It has already been observed generally how the decision whe-
ther there has been an infringement or not of a particular patent
may depend largely on what standard of skill and scientific know-
ledge is to be imputed to the addressee of the patent. In proportion
as it is assumed that the person reading tho Patent will be either
more or less skilled, so will the construction become more or less
embracing ; and so will the limits of the monopoly protected
become more or less wide ; and on the width of the limits of this
monopoly may depend the decision whether or not that monopoly
has been infringed by a particular act of the Defendant. It has
been noticed that on the whole the Courts now usually assume, for
the purpose of construing the patent, that the person to whom it
is addressed is a person of ordinary skill as a mechanic and chemist:
though in construing patents of a more than ordinarily technical
and scientific nature the addressee may be taken to be a person
highly skilled in the particular art under reference. It follows from
this, in many cases, that where in a specification reference is made
to a particular means for the fulfilling of a certain subsidiary
function, the addressee of the Patent, if he is a person with the
requisite technical knowledge, will be fully aware that such a
function may be fulfilled, alternatively, by one or more other
methods (either mechanical or chemical), which may not have been
expressly mentioned by the patentee in his specification. It has
been recognised also that in some cases it may be impossible for a
patentee to express within his specification every conceivable
parallel means by which a particular function essential to his inven-
tion may be accomplished. At the same time it has also been
recognised that if the patentee is not to be allowed to have protec-
tion against persons who take the essential merits of his invention
only varying the means here and there of fulfilling such subsidiary
functions, this will deprive the patent of all practical value. In
this way the doctrine known as the doctrine of equivalents has
grown up. Without such a doctrine being applied in the construc-
tion of a specification there would be no end to the number of
equivalent minor processes which it would become necessary for a
patentee to mention precisely and expressly in his specification ;
612
THE LAW OF PATENTS IN INDIA
[Ch. XVI
and in some instances it might become impossible in practice for
him to be given any useful protection at all.
Naturally the doctrine arose first more in relation to mechani-
cal equivalents : though it has since been extended largely also to
chemical equivalents.
Scope of the doctrine of equivalents.
It has been stated that the proper function of the doctrine
of equivalents is to protect the patentee against evasions or varia-
tions which a reasonable man would either not have foreseen or not
have considered it necessary to mention specifically in his specifica-
tion : rather than to supplement faults of drafting by reading in
claims which should have been inserted in the first instance . 30
It has been pointed out that in the case of a functional claim
it becomes much more easy to establish an infringement through the
doctrine of mechanical equivalents . 31
Doctrine of equivalents and the test of similarity where the
patentee’s invention is for a combination.
Certain observations in some of the older cases would tend
to support the view that where the patent is for a combination,
the application of the ordinary doctrine of equivalents is excluded.
On that view if the patent were to be, for example, for a combina-
tion of four integers, and if the alleged infringing combination was
composed of three of '•the identical integers plus an equivalent in
place of the fourth, there should be held in law to be not sufficient
similarity to constitute infringement. It is submitted that this is
not a correct view of the law ; and that the doctrine of equivalents
may be relied on, in proper circumstances even where the patent
relates to a combination as in any other case.
The law on the point was recently summarised in the following
observations by the Lord Justice Clerk during the course of his
judgment in The Rheostatic Company Ltd. v. Robert McLaren <&
Company Ltd .* 2
It was argued to us that the rule of mechanical equivalents
80 See Fletcher Moulton p. 134.
81 See Fletcher Moulton p. 136.
88 (1936) 53. R. P. C. 109 at pp. 119, 125, 126.
Ch. XVI]
‘‘COUNTERFEITS OR IMITATES”
613
could not be founded on where the patent said to be infringed was
for a combination only. This proposition is much too broadly
stated. The correct statement of the law is to be found in Procter
v. liennis L. R. 36 Ch. Div. 740, where Cotton L. J. at p. 757 put
the matter thus : — “Where there is no novelty in the result, and
where the machine is not a new one, but the claim is only for
improvements in a known machine for producing a known result,
the patentee must be tied down strictly to the invention which he
claims and the mode which he points out of effecting the improve-
ment.” Curtis v. Platt L. R. 3 Ch. Div. 135n is an example, for
there the patentee had taken out a patent for an improved method
of reversing machinery in a spinning mule, which itself was a known
and patented machine, that is to say the patent was for a mechanical
device within an existing patent. In such a case it was held that the
inventor was tied strictly to his own mechanical device, and could
not plead another mechanical equivalent as an infringement of his
patent rights. But such a case has no application to the present,
where the instrument as a thermostat is new and involves a novel
combination producing a new and hitherto unachieved result. A novel
combination of this type is as much to be protected against infringe-
ment as an invention that embodies an entirely novel principle.
As was said by Parker J. in Marconi v. British Radio Telegraph
Co. Ltd., (1911) 28. R.P.C. 181, at p. 217 : “. . . . the combination
or process, besides being new, produces new and useful results,
everyone who produces the same results by using the essential parts
of the combination is an infringer, even though he has in fact
altered the combination or process by omitting some unessential
part or step or substituting another ‘’part or step/' which is in fact
equivalent to the part or step he has omitted. “Applying this law
to the facts of this case, I reach the conclusion that SatchwelFs
invention was pirated by the Defenders in their A. C. M. instrument
in a hardly disguised form, although it may well be that the piracy
was unintentional. I hold infringement to be proved/'
“Or counterfeits or imitates it”.
It seems that these phrases in Sec. 29(1) are not meant to
suggest any different modes of infringement other than by way of
manufacture, sale or use but are merely embodied in the Section to
make it clear that the right of suit is not confined to cases where
614 THE LAW OF PATENTS IN INDIA [Ch. XVI
a preoisely similar invention is made, sold or used : but extends
to cases of a sufficient similarity.
“The invention or counterfeits it or imitates it” : what
degree of similarity is requisite.
One fundamental difference between a suit for infringement
of patent and a suit for passing off must here be emphasised. In
a passing off suit there are to be considered on the one hand the
goods of the Plaintiff and on the other the goods of the Defendant :
it is in regard to these that the eye of the Judge is required to
operate. The question is whether the Defendant has passed off his
goods as the goods of the Plaintiff : the question is therefore purely
between the goods of the Defendant which are complained of and
the goods of the Plaintiff. In a suit for an infringement of Patent
the question is not the same. Here the question concerns, not the
goods, but the invention of the patentee as described in the
patentee’s specification in respect of which his Letters Patent have
been granted. Thus it is not difficult to imagine cases where there
arc no goods of the patentee in existence at all, whore the patentee
has not progressed as far as to manufacture any goods under his
patent ; and yet he will be able to maintain a suit for infringement
against a Defendant who has manufactured goods in infringement
of his Patent. The fundamental distinction exists in regard to the
nature of the property of the Plaintiff which is infringed in either
case. In a Patont suit it is the invention of the Plaintiff ; and the
whole question turns on the scope of the invention in any given
case. It is fundamentally important to note that the criterion is
the infringement of the invention and not of the goods of the
Plaintiff. What is protected under Patent Law is the full territory
of the Plaintiff’s invention as described in his Specification and
anything which is an encroachment of this territory is an infringe*
ment.
It often happens that under his Patent a Plaintiff manufactures
an article in one form and a Defendant comes along and manufac-
tures an article in another form. It may be that no member of the
public who has seen the two articles would be led by their appear-
ance or get up to mistake the one for the other or to believe that
the second article was a product manufactured or belonging to the
first manufacturer. There might be no prospect whatever of the
Ch. XVI] CONSTRUCTION OF THE SPECIFICATION
615
Plaintiff being successful in a passing off suit. Yet if the second
article is one covered by the Plaintiff’s specification the Plaintiff
is clearly entitled to succeed in an infringement suit.
CONSTRUCTION OF THE SPECIFICATION
It is for the reasons indicated above that it becomes essential
in any given case, where there is a dispute on the question of
similarity, when considering whether or not there has in fact
been an infringement perpetrated, first to read and construe the
Specification of the Patent said to have been infringed. It is now
proposed to turn to a consideration of certain general principles on
which a Patent is required to be construed.
As to “benevolent construction”.
In the old cases observations occur which would tend to sup-
port a view that there is a positive principle in regard to the cons-
truction of Patent Specifications to the effect that the Specification
must be construed “benevolently” in favour of the patentee. Such
observations were no doubt made at a time when there was consider-
able prejudice against monopolies; and against patentees; and were
made for the purpose of counter-balancing any tendency to construe
the specification unfavourably to the prejudice of the patentee. In
more recent times, since the administration of patents has been
placed on a fair footing both to the public and to the patentee, and
since the advantages to the public of encouraging patents for inven-
tions have been more widely appreciated, no such prejudice remains
requiring to be positively counter-balanced. At the present day it
is possible if the positive principle of benevolent construction were
to be recognised and habitually applied for the construction of
specifications, the result would be to tip the balance between a
favourable and an unfavourable construction unreasonably far in
favour of the patentee. Accordingly it seems proper to observe that
at the present day no positive principle of a benevolent construction
of the specification can be relied on by the patentee ; the only prin-
ciple on the point being that the specification is to be construed
like all other written instruments impartially, according to its true
616 THE LAW OF PATENTS IN INDIA [Ch. XVI
meaning ; and that it is not to be subjected either to a benign
interpretation or to a strict one . 33
The proper principles in this respect for the construction of
specifications were clearly stated in Cropper v. Smith u in the follow-
ing observations of Bowen L. J. which have been frequently subse-
quently approved in later cases 35 thus : —
“We were pressed very earnestly to give this document what
has been called a benevolent construction. It seems to
me that that prayer for grace is very often addressed to
Courts under circumstances which preclude the propriety
of their entertaining it for a moment. It is quite true that
in old times a great many Judges were supposed to be
astute to defeat patents, and as a corrective, so to speak,
to that inclination of the Courts it became necessary for
the tribunal to warn itself that patentees must be fairly
dealt with as between themselves and the public, and as
a canon of construction accordingly reference has been,
from time to time, in various cases, made to the idea that
a benignant or benevolent construction was one that
ought to be invoked, that is to say, reference has been
made to an old principle of construction, which is not at
all special to the subject-matter of patents, but applies to
all documents and all deeds, which is as old as Coke and
Shepherd’s Touchstone, to the effect that the interpreta-
tion of a written document ought to be benevolent or
benign. Verba debent intelligi cum effectu nt res magis
valeat qnam pereat. Now that is only a caution against
excessive formalism, it only means that when you can see
what the true construction of the document is, or, in other
words, what the true intention of the parties is, as express-
ed in their language you must not allow yourself to be
drawn away from the true view of the document by over-
* B Seo Harrison v. Anderston Foundry Go . (1876) I. App. Cas. 574 ; Clark
v. Adie (1875) 2 App. Cas. 436 ; Needham v. Johnson (1884) l.R.P.C. 58 at p. 271 ;
British Thomson- Houston Coy. Ltd. v. Corona Lamp Works Ltd . (1922) 39 R.P.C.
49 (H.L.) at p. 89 ; and See Frost (Ifch edn.; 1912) Vol. 1 at p. 270.
• 4 (1884) 1 R. C. 89.
See Benno Jaffe and Darmstacdter Lanolin Fahrik v. Richardson <fc Co.
(1894) 11 R.P.C. 271.
Ch. XVI] AS TO ‘‘BENEVOLENT CONSTRUCTION’’ 017
nicety in criticism of expression. That is what seems to
me to be meant. You must remember that the parties
meant to do something by their deed, and you must not
defeat it, if effect can be given to their intention by a
fair construction of the whole document. It is almost
always coupled with another maxim, which seems to be
nearly the same thing in another shape. Verba inten -
tioni debent inservire . You must construe particular
words so as not to defeat the clear intention of the whole.
That is what seems to me to be the meaning of the maxim,
that the interpretation of documents ought to be bene-
volent or benign ; but having said that, it follows that
although there may be cases in which you use it when the
validity of a patent is in question, it certainly can never
be used when the construction of a document is clear ;
that is to say, it is a guide to help you to construe a
document, it is not an excuse to justify you in miscons-
truing a document”.
To this extent only may the doctrine of benevolent construc-
tion be said to survive at the present day, that the court, where
the language is ambiguous will lean towards that construction which
will make sense of the specification rather than that which will
make it useless, and towards that interpretation of an ambiguous
phrase which will support its validity rather than its invalidity. In
this however, in truth, there is no application of any special principle
for benevolent construction peculiar to patent specifications but
merely an application of the ordinary rule as to construction, which
is applicable indiscriminately to all documents .'* 0
Particularly may the court lean towards a construction which
will support the validity of the Patent in a case where the Defendants
have adopted the invention and used or dealt in it extensively and
then turn round and attack its validity on all points hoping perchance,
with luck, to have it upset on one at least out of all the technical
objections taken. Such a case and the proper tendency of a Court
to lean towards the validity of a patent in such a case was eloquently
referred to by the Master of the Rolls in Kdisou Bell Phonograph
80 See Plimpton v. Spilter (1877) 6 Ch. I). 422; Otto Linford { 1881) 46
L.T.N.S. 39.
78
618 THE LAW OF PATENTS IN INDIA [Ch. XVI
Corporation Ltd. v. Smith and Young 37 in the following vigorous
words : —
“The patent refers to a phonographic machine. If the patent
is a good one, there is no doubt about the infringement ;
but the Defendants who have infringed, and who have
taken the full benefit of the invention if the patent is a
good one, finding that they are guilty of an infringement,
and that therefore there is a great check to their business,
do that which is common in such cases — they turn round
and attack the patent. They have used the exact thing
that has been patented *, they have used it to a consider-
able extent, but they say “Your patent is a bad one ; you
cannot sue upon it” ; and they have taken, by way of
objection, every one of the ordinary objections which arc
taken under such circumstances — that is to say, they spell
every paragraph and every line in the patent, and try to
persuade the Court that some one line, or some one sen-
tence in it is so bad that it makes the whole of the patent
bad, and prevents the inventor from having the benefit of
his invention however useful or however great it may be.
1 do not hesitate to say myself, that when that is the sort
of defence in such a case, the Court ought to look care-
fully to see whether any one of those objections can be
sustained. The Court certainly under those circumstances
ought not in any way to favour the objection. Those who
take such objections as that must prove them strictly.
That is my view.”
What has been said above refers of course to questions affec-
ting the benevolent construction of the specification only ; and does
not affect at all any question whether or not the terms of the grant
itself should in itself be benevolently or non-benevolcntly construed.
The form of grant in use at the present day in the United Kingdom
still contains a clause directing that it should be benevolently cons-
trued. 38 But since the form of grant in use in British India contains
no such words, no question arises in British India of considering
• » (1894) 11. R.P.C. 389 at p. 395.
*" See also Frost (4th edn. 1912) Vol. 1 at p. 273.
Ch. XVI]
THE ADDRESSEE
619
what would be the proper interpretation to be put on any suoh
express direction if embodied in the grant as affecting the construc-
tion of the grant itself.
The Specification is to be construed as understood by the addressee.
It is well settled that the Specifications of Patents are
addressed to those skilled in the art to which the particular Patent
relates and must be construed by the Courts as they would be in-
terpreted by such addressees . 39
This aspect of the matter has already been referred to in
connection with the topic of insufficiency. The standard of know-
ledge, skill and intelligence of the addressee may vary according
to the nature of the invention. In the case of certain inventions,
as already noted, it may be necessary that the Specification will be
required to be construed as it would, for various parts, be under-
stood by more than one addressee with different qualifications.
Thus while this canon of construction is universal for all specifica-
tions, the precise effect of its application may differ considerably in
different cases . 40
The standard of knowledge, skill and intelligence taken to be
that of the addressee, will be the standard of such a man at the
material date. That will be at the date of the application for the
patent to which the particular Specification relates. AH later know-
ledge is required to be eliminated : and all knowledge of a kind
which would not be possessed by such addressee.
Both in order that the Court may have the positive standard
of knowledge possessed by the addressee who may bo a specialist to
some extent, since the Court will not ordinarily be expected to be in
possession of such specialised technical knowledge, as also in order
that the Court may be instructed as to what field of knowledge,
acquired since the date of the application, has to be eliminated, it
usually becomes necessary that evidence should be given to show
the precise state of the common knowledge in the prior act. 41
** See British Dynamite Co. v. Krebs (1879) 13. R. P. C. 192 (H. L.) Scott's
Patent (1903) 20. R. P. C. 257 at p. 262.
4 * See at p. 241 above.
41 See further, as to the application of this canon of construction, Fletcher-
Moulton at p. 122 ; also Frost (4th edn : 1912) at pp. 276, 277 & 282.
620
THE LAW OF PATENTS IN INDIA
[Ch. XVI
The Specification is to be construed as a whole.
It is well settled that the Specification is to be read as a whole.
The proper rule of construction as to this was clearly stated by the
Master of the Rolls in Edison Phonograph Corporation Ltd. v. Smith
and Yonny : 42 in the following passage : —
“Now, then, the first question raised upon those sets of objec-
tions, taking them all together, is, what is the true cons-
truction of the patent, or rather what is the proper rule of
construction of a patent. There are certain rules as to
the effect of patents, when you have construed them, which
are different from other instruments ; but as to the rule of
construction of a patent, when the question is what is the
true construction, I cannot doubt myself that the same
rules of construction or the same canons of construction
arc to be applied to the construction of a patent, or to any
part of it, as are used with regard to any other instrument.
Therefore, when objection is taken to the claim, or to any
one of several claims, it is not using the true canons of
construction to read that alone and to say that, without
regard to what there is in the rest of the patent, that
means so-and-so or that means what is stated as the objec-
tion, and therefore, reading it in that way, you must hold
that the patent is bad. You must look at the whole of the
Specification, and then, having looked at the whole, if it is
an objection to the claim, see what the claim, on the
true construction of it is, having regard to the whole of
the instrument. It is with regard to that rule, and
only as an instance of it, that one finds certain things
said in some of the cases. Now, in the case before
Lord Hathcrley, of Arnold v. Bradbury , L. R. 6. Ch.
App. 706, the parties argued very much as was
attempted yesterday. They took one of the claims and
said : “Read that alone, and then the language is such
that you ought to say that, according to “the ordinary
grammatical construction of it, it claims a great deal, and
it claims so much that a part of it to which that applies is
49
(1894) 11 R. P. C. 389 at p. 395.
Ch. XVI]
CONSTRUED AS A WHOLE
621
too large ; that is, it includes something which cannot be
patented, and therefore, it is bad'\ Now, that was doing
exactly what Mr. Bousfield attempted to do, to read the
claim by itself, and then say, upon the ordinary gramma-
tical construction of it, it means a great deal, and a part of
that great deal would include something which was old,
and, therefore, it is bad. But Lord Hatherley, in Arnold
v. Bradbury , as an instance of what I have been saying,
that you must look at the whole instrument, says you
ought not to look at the claim in that way ; you ought to
read the Specification first to sec what it is the man says
he has invented, and what it is, therefore, that he proposes
to patent, and having got that, then read his claim — read it
fairly— and see whether then you find that the claim
claims more than that which he has declared that he
desires to patent, and which he describes as the thing to be
done, and which he has invented. Lord Hatherley says
at page 712, “I do not think that the proper way of dealing
with this question is to look first at the claim, and then sec
what the full description of the invention is, but rather
first to read the description of the invention in order that
your mind may be prepared for what it is the inventor is
about to claim. He tells you that he has now described
and particularly ascertained the nature of his invention,
and the manner in which it is to be performed, and then
in the claim wo do not find anything asserted or claimed
as his invention beyond what is found in the previous
part”, that is, in that particular case. “Now, I am invited
to consider that, as a general claim of all machinery that
ever may be invented hereafter which can perform the
operation which he here describes, but he introduces the
claim by saying that his object is to state what lie consi-
ders novel in his invention”. Then he afterwards says that
the claim is simply to point out what he considers to be
novel in what he has already stated. Therefore, if you
wish to construe the whole instrument, when the question
arises on the claim, and to construe it fairly, you must
look at the description of the invention, and then, having
looked at that, see whether, upon a fair reading of the
THE LAW OF PATENTS IN INDIA
[Ch. XVI
claim, it goes further than to claim what is thus described.
Lord Justice Lindley in the case of Edison and Stvan
United Electric Co. v. Woodhouse and Rawson 4 R. P. C.,
107, says : — “It remains to consider the objections to the
Specifications and claim. One is that the expression
‘carbon gas or liquid’ in the claim is ambiguous and too
wide and misleading. It was urged that the expression
includes carbonic oxide and carbonio acid, neither of which
will do.” Then he says : — “But every claim in every
patent must be read and construed with reference to the
Specification and not as if the claim was an isolated
sentence having no connection with or reference to what
precedes it.” Well, that is the rule which I think is the
right one, and it is the same rule as you would apply to
the construction of any instrument. Read the whole of
it before you determine upon an objection to any particular
part of it. When you have read the whole of it, you must
come back to that which is objected to, and see what is the
fair construction of it, having regard to what you read
before. You must not distort it ; you must not add to it ;
you must not take from it ; you must construe it as it is,
but construe it fairly. You must say what construction
you put upon it”.
Everything not claimed is disclaimed.
It is essehtial in construing any patent Specification to recollect
the well established canon of construction that everything which is
not claimed is disclaimed.
The leading case in which this principle was established was
Harrison v. Anderston Foundry Co.* 3 It has been repeatedly and
consistently followed . 44
The result of the application of this canon of construction is
that where a patentee has limited his invention for which he claims
a monopoly by the description given by him in his claims, he cannot
thereafter seek to enlarge the effect of his claims because he has
described something wider in the body of his Specification.
4 » (1876) 1. A. C. 574.
** See Fletcher- Moulton at p. 119 to p. 122 where the principle is discussed.
Ch. XVI] EVERYTHING NOT CLAIMED IS DISCLAIMED
623
It is immaterial whether the enlargement sought to be obtained
of the claim is for the purpose of widening the net of the monopoly
so as to catch an infringer who would otherwise escape, or for the
purpose of including in the invention claimed some additional
element which has the effect of making the invention new, in order
to prevent the patent, without it, being bad for want of novelty.
In either case the claims cannot be enlarged so as to add anything
which is not in the claims themselves when fairly read.
Thus in Ingersoll Sergeant Drill Coy. v. Consolidated Pneumatic.
Tool Coy. Ltd.* 6 where the patent was for a certain mechanism and it
was sought to add to the claims by importing into them certain
features of novelty described in the body of the Specification, it was
held that the claims could not be made to carry a gloss imported
from the Specification, when there was no indication in the claims
themselves by which, even when construed in the light of the Speci-
fication, they could be said to include the elements in question.
The point was dealt with in the following passages in tho
judgment of Lord Loreburn L. C. in that case : —
“There can be no dispute about the law. Each Claim in a
Specification is independent and a Plaintiff in an action for infringe-
ment must show that there has been an adoption of some new in-
vention adequately described in a Claim when fairly construed. I
am not aware that any special canons of construction are applicable
to Specifications, nor am 1 able to accept, if indeed 1 rightly under-
stand them, certain formidable generalisations presented to us in
argument as to the principles on which they arc to be interpreted.
Obviously, the rest of the Specification may be considered in order
to assist in comprehending and construing a Claim, but the Claim
must state, either by express words or by plain reference, what is
the invention for which protection is demanded. The idea of
allowing a patentee to use perfectly general language in the Claim,
and subsequently to restrict, or expand, or qualify what is therein
expressed by borrowing this or that gloss from other parts of tho
Specification, is wholly inadmissible. I should have thought it was
also a wholly original pretension. The point in this case is whether
or not Claims 13 and 14 describe a new invention. The Defendants
4t
(1906) 25. R. F. C. 61 at p. 82.
624
THE LAW OF PATENTS IN INDIA
[Ch. XVI
admit that they have adopted a mechanism which falls within the
description properly read, but say that the mechanism there descri-
bed is an old mechanism. The Plaintiffs say, on the contrary, that
the description, properly read, is a description of a new mechanism.
What, then, is it that is described ? That is the first inquiry.”
“According to Mr. Bousfield the piston means the piston
with the circumferential groove and projecting stem described on
page 3 of the Specification, or as altered in accordance therewith.
The piston chamber also, it seems, means one complying with the
description on page 2 of the Specification. So as regards the
passages, because the Specification at page 4 describes the two pass-
ages a9 opening into the piston chamber at about the same point
in its length, the Claim must also, we are told, be read as conveying
that they are to be at about the same point. Again, because,
at page 6, the Specification informs us that the rearward
movement of the piston closes both the passages, we are to read
that also into the Claim. And the reason urged for so qualifying
the language of the Claim is that these things are essential to
the success of the Plaintiffs' hammer as a working hammer. That
would have been a good reason for inserting them expressly or by
plain reference in the Claim had it been thought safe or wise to do
so, but is no reason at all for reading them into the Claim when
they are not there. One or two more glosses are sought to be
added by Mr. Bousfield, but they are all on the same footing and
need not further be discussed. Mr. Walter put it a little differently.
He attributed a very special meaning .to the words “independently
of the piston”, and said they were put in to show that no part of the
live air passage is to be in the piston, meaning by the live air passage
the whole distance from the source of supply to the valve. All I
can say of this is that I can extract nothing of the kind out of the
words used, even when illuminated by the rest of the Specification.
(The learned Lord Chancellor then considered the arguments
in the case and proceeded.)
Accordingly it comes to this. We are asked to construe the
Claim with reference to the Specification, not in order to understand
what the former says, but to make it say things which in fact it
does not say at all.
If such a process were admitted all certainty would vanish. No
Ch. XVI]
OASES
625
one in coustruing a Claim would know how far he could rely on the
words used or how to pick from the Specification the qualifying
phrases. Patents are not unconditional grants of a monopoly. The
patentee must, in return for his privilege, say plainly what is the
invention for which he asks protection, so that others may learn
that and its limits. And if he chooses separately to claim a sub-
ordinate invention he must make plain the metes and bounds of that
also. I think the Patentee has made it plain in Claim 13, if it be
fairly construed, and there is no novelty if the interpretation be as
I think it is”.
Accordingly the patent was held invalid for want of novelty.
As was said also by Jessell M. R. in 1 links <(-' Son v. Safety
Lighting Co .* 6 : —
“I am anxious, as I believe every Judge is who knows anything
of Patent Law, to support honest bona fide inventors who have
actually invented something novel and useful, and prevent their
patents from being overturned on mere technical objections, or on
mere cavillings with the language of their specification so as to
deprive the inventor of the benefit of his invention. This is some-
times called a “benevolent” mode of construction. Perhaps that is
not the best term to use, but it may be described as construing a
specification fairly, with a judicial anxiety to support a really useful
invention if it can be supported on a reasonable construction of the
patent. Beyond that the “benevolent” mode of construction does
not go. It never waB intended to make use of ambiguous expressions
with a view of protecting that which was not intended to be protec-
ted by the patentee, and which has not been claimed to be so protec-
ted by him, whether or not it was an invention unknown to himself.
It is for the patentee to tell the world that of which he claims a
monopoly, to tell them, “You may do everything but this ; but this
you must not do, this is my invention.” With the view of getting
this into a narrow compass, it has long been the practice of patent
agents to insert in specifications the distinct claim of what they say
is comprised in the patent, meaning that nothing else is comprised,
that everything else is thrown open to the public, or, to put it in
other words, if a man had described in his specification a dozen
4 « (1876) 4. Ch. D. 607 at p. 612.
79
THE LAW OF PATENTS IN INDIA
[Ch. XVI
620
new inventions of the most useful character, but has chosen to
confine his claim to one, he has given to the public the other eleven,
and he has no right to be protected as regards any one of the other
eleven if he wishes to recall that gift whioh he has made by
publishing the specification.”
In certain circumstances claims may be construed as including
matter essentially involved even though not specifically des-
cribed.
On the other hand in certain circumstances it may be that
though some element is not expressly mentioned in the claims of the
Specification yet it is so essentially involved in the matter which
is mentioned that it will be held to be included in the claim on a
fair reading of the claim in the light of the rest of the Specification.
In this case, it may be observed, the claim is not added to by the
importation from the body of the Specification of a gloss which was
not present in the claim itself : the words of the claim itself are on
the other hand interpreted so as to carry their full meaning.
Thus in Tiveedale v. Ashworth 47 the claim was construed as
including an element of stretching in regard to cloth even though
there was no specific mention of this in the claim. The Lord Chan-
cellor on this point observed : —
“Now, my Lords, looking to the patent itself, and the Specifica-
tion, I am unable to give any other construction to the patent here
than that which involves the particular thing, with its own parti-
cular incidents, Whioh is therein described ; and I think that the
fallacy of the argument which has been ingeniously suggested to us
is this — it is said that there is no claim for the stretching. If by
that is meant that there is in the claim no such word as “stretching”,
I agree the word “stretching” does not occur • but what there is
in the claim is this : there is a claim for a thing which is described
and illustrated by the description in the letterpress, and the draw-
ings describe a maohine, and describe the mode of manufacturing
the machine, which of itself necessarily involves as one of the merits
of the invention the power of stretching the material, at the same
time and by the same operation as completing the machine. That,
I believe, is the merit of the invention, and a very material merit of
« (1892) 9. R.P.0. 127.
Ch. XVI] EFFECT IN COMBINATION CLAIMS 627
the invention, and it appears to me that being one of the important
elements forming the substance of the invention, it is one which the
Defendants have in no way invaded.” 48
Thus in that oase, through the claim being given the wider of
the two meanings in dispute, it was construed as monopolising an
invention whioh was not infringed.
The distinction between these cases and such as the Ingersoll
Sargeant Drill Co.’s case is a real one : though it may be difficult in
certain oiroumstances to say which side of the line a given oase may
be, for the purposes of construction.
Effect of the application of the canon that everything not claimed
is disclaimed in cases where the claim is for a combination.
It is as well to note one further important result which follows
automatically from the application of the principle that everything
not claimed is disclaimed, whioh is this. If his patent is for a oertain
combination only, then unless the Patentee has made separate claims
for the separate integers or for the subordinate combinations which
go to make up the combination claimed, the Specification will have to
be construed as giving to the Patentee no monopoly for these ; even
though they may be new in themselves. And if another person
makes, sells or uses, as the oase may be, one or more of suoh
separate integers or one or more of suoh subordinate combinations,
provided he does not infringe the whole combination claimed (e.g. by
equivalents for certain parts), then there is no infringement and the
Patentee has no redress 40 .
Remaining defences referred to in Chapter XIV.
There now remain for further consideration only those defenoes
which were referred to in Chapter XIV under the numbers 42,
43 & 44.
The defence based on an amendment of the Plaintiffs Specifi-
cation. (No. 42 in Chapter XIV.)
It may be worth ezphasising that it may be a matter of vital
importance to either party when a claim of infringement is put
forward to investigate carefully precisely what manner of amend-
44 See also Muirheai v. Commercial Cable Co. (1805) 12 R.P.O. at p. 52.
44 See Oontolidaied Oar Beating Co. r. Came (1903) 20 R.P.G. 745 (P. C.).
THE LAW OF PATENTS IN INDIA
[Ch. XVI
merits may have taken place at any time during the life of the
Patent and to ascertain precisely how the matters in issue may have
been affected by such amendments. Such an investigation may in
a partioular case result in most useful and possibly unexpected
discoveries.
Clearly if it be found to be the fact that the Plaintiff's Patent
has been amended since the date of the alleged infringement in such
circumstances that the act complained of was not covered at the
time by the claims in the unamended specification, this will be a
clear answer to any claim of infringement which may, by error, be
sought to have been based on the Specification amended.
Clearly in such a case there will have been no infringement
since there was no monopoly existing at the time of the alleged
infringing act such as to cover the act complained of. This defence
is merely noted for purposes of reference : and calls for no further
comment. It is merely a specific instance of the defence already
considered (and noted under number 41 in Chapter XIV) in a case
where the alleged infringement is not covered by the claims in the
Plaintiff’s specification. It is however also in a sense the converse
of a defence under Section 19 which is considered below.
The defence under Section 19 : in certain cases where the Plaintiff’s
Specification has been amended.
It is provided by Sec. 19 as follows : —
“19. Where an amendment of a specification by way of
'disclaimer, correction or explanation has been allowed
under this Act, no damages shall be given in any
suit in respect of the use of the invention before the
date of the decision allowing the amendment unless
the patentee establishes to the satisfaction of the
Court that his original claim was framed in good
faith and with reasonable skill and knowledge.”
Accordingly a statutory defence, as against a claim for damages
only, is made available to a Defendant in a case of which the
circumstances fulfil the conditions of this Section. A defence
under the section will however be no answer to a claim for an
injunction. 50
80 The corresponding Section in the current English Act is Section 23. See
Terrell. ( 8th edn.) at p. 247. The same phrase “that a claim was framed in
Ch.XVl]
DEFENCE BASED ON AMENDMENT
629
The onus of proving that the original claim was framed with
reasonable skill and knowledge will clearly, under the Seotion, be
on the Patentee.
Lord Moulton's defence.
In the defences to a claim for infringement which have hitherto
been considered in this Chapter, it has been essential to look into
the Plaintiff’s Specification all these defences being based on matter
contained in the Specification. The defence now under considera-
tion, known as Lord Moulton’s defence, is also based essentially
on matter contained in the Specification, but owing to the peculiar
dilemma created when this defence is raised, it becomes entirely
immaterial to look into the contents of the Plaintiff’s Specification
at all.
The defence, as already indicated , 51 consists of an alternative
plea in relation to the Plaintiff's Specification, that, either if the
alleged infringing article or process is within the ambit of the
Plaintiff’s claims, then the Plaintiff’s claim is invalid for want of
novelty, or, if outside the ambit, then there is in fact no infringe-
ment. This alternative plea is raised indirectly in relation to the
Plaintiff’s Specification by means of referring directly only to the
article or process, not of the Plaintiff, but, of the Defendant himself.
The actual plea is that the Defendant’s article or process which is
complained of as being an infringement is not novel.
The defence was first notoriously originated and enunciated
by Lord Moulton in the speech delivered by him in the House of
Lords on the decision of the case of Gillette Safety llaxor Co. v.
Anglo-American Trading Co. Ltd ? 2 It will be of interest to quote
the ipsisdma verba used by him on that occasion : which were as
follows : —
“I now turn to the Defendants’ razor, the alleged infringement.
In it I find a razor blade, fixed transversely to a handle. This is
effected by its being clamped tightly between two cheeks, the three
good faith and with reasonable skill and knowledge'’ also occurs in Section 32 A
of the current English Act ; where the burden iB imposed on the patentee of
proving this in relation to an invalid claim when he desires relief on other valid
claims.
81 See page 545.
(1913) 30. B.P.G. 465 at p. 477.
99
630 THE LAW OF PATENTS IN INDIA [Ch. XVI
being screwed together by means of a sorew out in the handle. The
near oheek has its edge extended and cnt into teeth, so as to form
a guard, precisely as in Butler’s safety razor. On comparing the
two, I have oome unhesitatingly to the conclusion that there is no
patentable difference, no inventive step, between Butler’s safety
razor and that sold by the Defendants. To establish this, I will
proceed to examine the precise difference in detail.”
(The learned lord then prooeedcd to consider the qualities of
the Defendants’ razor in relation to a Specification of one Butler
(not the Plaintiff) which was a Specification relating to an American
Patent which had been published in England before the date of the
Plaintiff’s Patent sued upon in the action : and proceeded.)
"I am of opinion, therefore, that there is no patentable differ*
ence between the Defendants’ safety razor and that shown and
described by Butler. If the blade used by the Defendants be put
into Butler’s handle (and this, as I have said, involves no invention)
you have a safety razor which is indistinguishable from the Defen-
dants’ razor in anything which bears on the question of invention.
It follows, therefore, that no patent of date subsequent to the publi-
cation of Butler’s Specification could possibly interfere with the
right of the public to make the Defendants’ razor. If the claims of
such a Patent were so wide as to include it, the Patent would be
bad, because it would include something which differed by no patent-
able difference from that which was already in possession of the
public. Such a patent would be bad for want of novelty. If the
Claims were not sufficiently wide to inolude the Defendants’ razor,
the patentee could not complain of the public making it. In other
words, the Defendants must succeed either on invalidity or on non-
infringement.
I am, therefore, of opinion that in this case the Defendants*
right to suoceed can be established without an examination of the
terms of the Specification of the Plaintiffs Letters Patent. I am
aware that such a mode of deciding a Patent case is unusual, but
from the point of view of the public it is important that this method
of viewing their rights should not be overlooked. In practical life
it is often the only safeguard to the manufacturer. It is impossible
for an ordinary member of the public to keep watoh on all the
numerous Patents which are taken out and to ascertain the validity
Cb. XVI]
LORD MOULTON'S DEFENCE
831
and scope of their claims. But he is entitled to feel secure if he
knows that that which he is doing differs from that which has been
done of old only in non-patentable variations, such as the substitu-
tion of mechanioal equivalents or changes of material, shape, or
size. The defence that “the alleged infringement was not novel at
the date of the Plaintiff’s Letters Patent” is a good defence in law,
and it would sometimes obviate the great length and expense of
Patent cases if the Defendant could and would put forth his case
in this form, and thus spare himself the trouble of demonstrating
on which horn of the well-known dilemma the Plaintiff had impaled
himself, invalidity or non-infringement.”
This defence will be as good in British India to-day as it was
in the United Kingdom in 1913 when it was so ably delineated by
Lord Moulton.
CHAPTER XVII
ENFORCEMENT OF MONOPOLY RIGHTS BY PATENTEE
LETTERS OF DEMAND— SUITS— PRACTICE AND PRO-
CEDURE IN SUIT FOR INFRINGEMENT WHO CAN
SUE— WHO CAN BE SUED— JURISDICTION-
INTERLOCUTORY MATTERS— EX PARTE
—INTERIM INJUNCTION— INTERIM
INJUNCTION ON NOTICE— RELIEFS
OBTAINABLE IN SUIT— PLEAD-
INGS— ONUS— EXPERTS—
ASSESSORS— FORM OF
ORDERS— COSTS—
APPEALS
PART I
PRELIMINARY OBSERVATIONS
This chapter has for convenience been divided into five parts.
This part is confined to certain observations of an introductory
nature as to the^ enforcement of Patent rights generally. In the
subsequent parts it is proposed to deal more in detail with various
matters which arise in connection with the procedure in an infringe-
ment suit.
Enforcement of monopoly rights by Patentee.
Having previously considered for what, and by whom, and
how a valid patent may be properly obtained and what are the
requisites of a valid patent, (See Chapters 6, 7, 8 & 9), a consideration
of which matters will have enabled a patentee to judge that his
patent is valid and his monopoly is good and inviolable, and
having considered in effect (in Chapters 14, 15 & 16) what may be
adjudged to be an infringement of the monopoly, it now remains
to consider the means by which and the procedure by which the
patentee can enforce his monopoly rights against infringers.
Ch. XVII]
ENFORCEMENT OF MONOPOLY RIGHTS
633
Enjoyment of patent rights Is entirely dependent upon legal
remedies.
It has long been recognised that the rights and benefits of a
patent would, both, be negligible if the law did not provide some
remedy for the patentee against those who may invade those rights.
The right to any species of corporeal property may, to a great extent,
be vindicated by the physical means at the command of the owner
and in physical possession. But with respect to an incorporeal
right such as a patent mononoly, which is a mere creature of the law,
the proprietor must depend almost entirely upon the law itself for
vindication and support . 1
Ancient remedies in England in the Court of the Star Chamber.
Originally the infringement of patent rights in England was
a wrong for which neither the ordinary common law nor the early
statute law of England provided any remedy . 2 It was however
cognizable by the Court of the Star Chamber : either as a contempt
of the royal authority 3 or under its general jurisdiction for the
repression of “cozenage" : cozenage being defined as “an offence
whereby anything is done guilefully in or out of contracts which
cannot filly bee termed by any special name”.
It may be noted in passing that the manner in which the Star
Chamber used to exercise its jurisdiction was by inflicting punish-
ment on the wrongdoers both summarily and with severity : thus
“apprentices or servants of the patentee attempting to reap the
fruits of his ingenuity ... were to be treated as first rogues and
then whipped ". 4 Such exercise by the Star Chamber of its jurisdic-
tion over the infringers of patent rights was found to bo objec-
tionable not only on account of its severity, but because, being a
creature of the Crown itself, it supported any grant which the
Crown thought fit to make ; and considered every infringement
of letters patent as a contempt. It was no doubt the unreasonable
oppression with which, prior to the passing of the Statute of
Monopolies, those monopolies were enforced against the public, that
1 See Edmunds p. 246 citing Uindniarch p. 248.
9 See Edmunds p. 147 citing Coryton p. 262.
9 See Edmunds p. 272 citing Webster on Letters Patent p. 42 n (y).
4 See Edmunds p. 247 citing Coryton p. 262 and authorities there cited.
80
634 THE LAW OF PATENTS IN INDIA [Ch. XVII
for long retarded in the United Kingdom the proper development
of the patent system.
In this respect the following observations of Hindmarch may
be of interest : —
"In former times slight defects were held sufficient to avoid
patents, and our Courts seemed always to look upon patent rights
with the utmost jealousy. This feeling against patentees was
doubtless produced by the widely spread and deeply rooted aversion
to all monopolies, which was engendered by the monstrous oppres-
sion practised by means of patent grants previous to the passing
of the Statute of Monopolies. That Statute completely suppressed
all unlawful grants, and most effectually guarded the rights of the
public against illegal monopolies ; but notwithstanding the securities
which the statute provided for the public against illegal monopolies,
it is singular enough that a period of two centuries should have
elapsed before the public prejudices against grants of patent
privileges to inventors disappeared, and before the judges began
to determine questions respecting patent rights fairly between the
patentees and the public.”
Jurisdiction removed from the Court of Star Chamber to the
Court of Common Law.
In 1623 in England by the Statute of Monopolies it was
provided that all questions affecting the force or validity of letters
patent should 4>e heard, tried and determined in the Courts of
Common Law, according to the common laws of the realm and not
otherwise ; and an action at law in England was declared and
recognised to be the proper remedy for infringement of patent
rights.
Former dual remedies under English law at common law and
equity.
From the time of the Statute of Monopolies there followed
a period up to the passing of the Judicature Act in 1873 when
in England there were, in varying degrees, dual remedies available
for the infringement of patents ; for which the patentee might
invoke respectively, the Common Law and Equity.
The ohange of forum from the Star Chamber to the Common
Law Courts was no doubt a big advance towards the determining
Ch. XVII]
FORMER DUAL REMEDIES IN ENGLAND
of questions fairly between the patentee and the public. The
restricted nature of the remedies which were at that time available
to a litigant in an action on the case in the Common Law Courts
should not however be lost sight of.
The Common Law gave him the right, through an action on
the case in a court of law to damages : but damages only and no
injunction. A court of law could only give the patentee damages
for any actual injury he had sustained by the violation of his rights ;
and had no power to prevent future infringements. What is more,
it had no power to order discovery and inspection or the taking of
accounts or any such matters by way of interlocutory procedure
in the action on the case as would provide any adequate machinery,
by which the full extent of any infringement which had been
committed could be ascertained.
The remedies available at the time in the Courts of Equity
though they could not grant a decree for damages were not so
restricted. These could grant injunctions which would relate to
the future and would often prove a more valuable remedy than
damages for acts done in the past. What was more, a Court of
Equity could order discovery and inspection and the taking of
accounts.
It must have become obvious at once that if the jurisdiction
of the Courts of Equity could be invoked by a patentee this would
be to his very great advantage. The observations of Hindmarch
as to these advantages in a Court of Equity are of interest ; —
“The Court of Chancery by means of its process of injunction,
could protect the patentee against the futuro invasion of his
privilege. It could command a person who had once violated a
patent right to refrain from committing any repetition of the
offence, on pain of rendering himself liable to be punished by
attachment, and imprisonment for contempt at the discretion of the
Court”
“(Again) the infringement of a patent is generally committed
in secret, or, at all events, under such circumstances as to preclude
the possibility of procuring sufficient legal evidence of the extent
of the infringement. There is in consequence very much difficulty
in the way of procuring evidence of a violation of the patent by a
suspected person, and it would be almost impossible in any case to
THE LAW OF PATENTS IN INDIA
[Ch. XVH
UdO
show by legal evidence in a Court of law, the fall extent of the
injury which the patentee has sustained by the infringement of his
patent. But a Court of Equity has the power, not possessed by a
Court of law, of compelling a defendant to answer on oath the
complaint made against him by the plaintiffs bill and to make a
full discovery of everything which is necessary to enable the court
to do justice between the parties.”
The question then was, the Statute of Monopolies having
given recourse to the Courts of Law only, how means could be
devised by which a patentee might have recourse also to the Courts
of Equity : that is to say the Court of Chancery as it existed
at the time.
Equity, according to its maxim, followed the law. According
to the strict theory of this maxim, therefore, it could claim no
independent jurisdiction in respect of the privilege, or the infringe-
ment of the privilege, created by letters patent . 6 However in spite
of this maxim (or partly to a limited extent at first because of it)
the Court of Chancery did come to interfere for the purpose of
assisting patentees to enforce their patent rights ; and as time
went on it tended to do so in an increasing degree. The history
of the growth of this equitable jurisdiction though curious and
instructive, as was remarked by Edmunds, is not required for
present purposes to be gone into in detail ; since it has little direct
importance at the present day even in England and still less in
India. It is sufficient here to note that as a beginning the jurisdic-
tion of the Court of Chancery was confined to interference on
principles similar to those which determined its action in cases of
nuisance, breach of contract, waste, the invasion of copyright, or of
the property in trade Becrets or trade marks, that is to say for the
purpose only of protecting the property of the patentee until his legal
right could be ascertained by the jurisdiction to which it properly
belonged. That it also showed itself ready to interfere to lend its
equitable remedies to assist a patentee, whose legal rights had been
established, to enforce those legal rights ; but in doing so it
exercised its jurisdiction only in aid of a patentee whose legal right
was clear and undoubted, and refused to enforce a claim under any
letters patent until their validity had been tested by an action
ft
See Edmunds p. 249 citing Calcroft v. West (1845) 2 Jones & Lat 128.
ch. xvn]
SURVIVALS
637
(in the Common Law Court) at law. And that, by a logical and
historical coincidence^ some of the principles which underlie the
decisions of cases at the present day have their origins not only
in their mere reasonableness in logic but in this historical develop-
ment of the jurisdiction of the Court of Chancery.
Survivals in present patent Law partly traceable to the history
of the development in England of these dual remedies.
Thus the reluctance of a Court at the present day to grant
to a Plaintiff an interim injunction when the validity of the Patent
is denied by the Defendant, or when the Plaintiff has not previously
obtained a certificate of its validity, is in the direct line of sequence
with the fact that at one time the Court of Chancery, by which
alone injunctions could be granted, was considered to have no juris-
diction to grant any injunction or to interfere at all in any case
where the patent rights of the Plaintiff had not been previously
validly established in a common law court. Today in England,
though all such distinctions between the equitable and the legal
remedy have vanished, yet because of the reasonableness of the
principle that an interim injunction should not be granted in a case
where the Plaintiff has not established the validity of his patent,
this principle is still enforced in the Courts in the decision of
current cases. It is submitted that the same principle will be
enforced in the courts in India ; both on account of its good sense
and on account of its having become now in India as in England
an inseparable part of the current patent law. It is submitted
that in the construction of the Act, where there is no difference
in wording between the English and the Indian provisions, wheii
it is established that certain principles arc enforced in England,
those same principles will be enforced in India ; the English oases
being taken as a guide and as authoritative on similarly worded
passages. It would otherwise bo necessary in considering the
English cases in some instances to eliminate those principles in
them which are the outcrop merely of an historical development in
England which has not had its complete counterpart in India ; and
to retain for Indian law only those principles which have been
evolved strictly from a process of pure logical construction in
regard to the wording of the Indian Statutes in question. This
would for practical purposes be a well nigh hopeless task. The
choice will then be of taking the principles in their entirety or not
THE LAW OF PATENTS IN INDIA
[Ch. XVII
at all. Since India has had little patent law development and
England has had much, and since it has often been observed that
in England the Act by itself would not supply a proper working
system without the supplementary case law, it is submitted that
it is preferable, in cases where the questions for decision are similar,
to take as good Indian law the principles embodied in the decisions
of the English cases, for the most part as they stand.
After all, in all legal history it has always been the case,
that when any part of the system of the law of one country has
been imported by another, certain of the legal fictions of the country
of origin have also perceptibly or imperceptibly been imported too.
It is inevitable : in many cases, the bare system of law in question
would not be found to work at all in practice if some of its fictions —
long buried in the past — from which it has been evolved were not
used in conjunction with it. But it will not be every legal fiction
which will be imported. The subject is a difficult one, and one more
to be treated fully in a work on historical jurisprudence than in the
present work. The subject does however, for the reasons noted,
have a positive bearing in relation to the principles of law to be
applied in the disposal of patent cases in India.
To return to the example which gave rise to this discussion,
it is submitted that in India in deciding whether or not to issue an
interim injunction in a patent suit, reliance may be placed in an
Indian Court on such decisions in the English cases as those enun-
ciating the principle that an injunction should not be granted unless
the validity of the patent has been established. And it is submitted
that the decisions in these cases may be relied on as they stand
without attempting to strip these English cases of those parts or
passages in them which may represent the outcome of the peculiar
English fictions — long since buried — which only arose through the
peculiar English history of the English Equity Courts.
It is unnecessary here to speculate further how far in certain
respects the present patent law in India owes its origin to the
historical development in the past of the law and of the law courts
across the seas ; or to take other examples of this growth. An
understanding however of the origins and growth of the remedies
Which were formerly available in England to a patentee in protect-
ing himself from infringement and in enforcing his patent rights
Ch. XVII]
ALL REMEDIES NOW OF A CIVIL SUIT
mast be, even on a cursory discussion such as this, not without
interest in considering the modern methods and remedies which are
applicable in India today.
All remedies of a civil action now available.
In 1873 when the fusion of law and equity was effected in
England by the Judicature Act, both remedies for damages and
for injunction became available in England in the same Court and
in the same action. Moreover all the machinery of the two pro-
cedures both of law and equity which had been available till then
only in cither an equitable or a legal court, became available in
one and the same court to the patentee-litigant in his action.
Since then the patentee has in England continued to have at his
disposal, for the purpose of enforcing his patent rights, all the very
adequate remedies which are available in an ordinary civil action ;
(no matter whether his action is instituted in the Chancery Division
or the Kings Bench Division of the Court).
In British India similar remedies, equally effective, are avail-
able to the patentee today in a civil suit. Ever since the grant
of the earliest monopoly or patent, the redress of the monopolist
against infringers has been through the Civil Courts. It has never
been sought even under the most recent Patent legislation either
in England or in India, notwithstanding the technical complexity
of many Patents and of the questions which arise in a case concern-
ing their alleged infringement, to give the Patent Office or the
Controller the power of deciding an infringement claim. Nor has
it been sought to make the infringement of a Patent by any legis-
lation either in England or in India a crime. 8
Reconnaissance.
In one important practical feature the position of a patentee
in regard to the enforcement of his remedies against an infringer
differs considerably from the position of most other persons against
whom a tort has been committed. In a running down case the
person run down is, from the very nature of the circumstances of
the tort, bound to be present in person when the tort is committed.
In a oase of trespass and damage to land it is likely that the owner
of the land while walking round his estate may see with his own
• See page 536 above.
640
THE LAW OF PATENTS IN INDIA
[Ck. xvn
eyes either the trespass being committed or at least the scene of die
trespass and the damage. And so in varying degrees of proximity
with other torts. But in the case of an infringement of patent,
where the patentee may be resident in Calcutta and the infringer
may commit his infringement in Delhi or Peshawar or Madras,
places several days distant from each other by express train, where
the patentee may not even have an agent or correspondent, it may
well be that the patentee will have had no knowledge at all even
of the fact of any infringement having been committed, much less
of its precise nature, unless he has taken special precautions to keep
himself informed.
It need hardly be emphasised that as a matter of business and
for selling purposes, just as a good organisation of sales agencies,
with an efficient system for the distribution of a wide knowledge
of the goods sold among prospective purchasers is most useful for
promoting sales, so a good system of reconnaissance in all com-
petitive markets with an efficient system for the collection of
knowledge as to what goods arc being sold by competitors is
equally essential. No one except the patentee is interested to
prevent the sale of such goods by others as aro an infringement of
his monopoly. Therefore if he does not care to make the necessary
enquiries to ascertain when and where and by whom infringing goods
are being sold, no one else in all probability will do so. If the
infringement of patents were a crime, he might have the assistance of
the police (as has to some extent the owner of a registered English
trade mark). As it is nothing but a civil private wrong, in which
neither the state nor anyone but himself is concerned, he must
act as his own policeman : or at least as his own intelligence
service.
One thing is certain : if he takes no steps to keep himself
supplied with the proper intelligence he will not know when infringe-
ments arc being committed, and if he does not know of them, he
obviously cannot take any steps to stop such infringements or to
enforce his own monopoly rights. And if he does not do this, he
will lose all benefit from his monopoly ; and might as well have no
Patent at all. Even if he only allows some infringements to be
effected with impunity, for every sale lost he will certainly suffer a
corresponding loss of profit : but he may also suffer loss and damage
Ch. XVII]
LETTER OF DEMAND
641
beyond such mere loss of profit by reason of damage to his reputa-
tion or to the good name of his patented article.
What steps he will take for keeping himself supplied with the
necessary intelligence is a matter of business for every manufacturer
and patentee to consider and decide for himself ; and hardly calls
for any discussion here. If he has a wide system of sales agencies,
he will no doubt use this as his intelligence service. If not he may
be well advised to employ a reputable patent agent who is in a posi-
tion to be kept in touch with the competing markets and to bring
any infringements to the patentee's notice promptly.
There has been in India lately a large quantity of importations
from abroad (and in particular from Japan) of an infringing nature.
As it often happens, where an imported article is actually an infringe-
ment of an Indian Patent, that it is also in other respects an act in
breach of the Merchandise Marks Act, it is possible that in some
cases the watchful patentee, or his patent agent, may be able to
receive useful information from enquiries made from the Customs
authorities.
Letter of demand.
When information has been received of an infringement, it is
important that a letter of demand should be sent, preferably by a
Solicitor or responsible Patent Agent, on behalf of the Patentee, to
the infringer without delay. The consequences of undue delay may
be serious. At the same time it is most advisable that full enquiries
should be made to confirm not only the fact of the infringement but
the fact that the person proposed to be addressed in the letter of
demand is in fact the person responsible for it, before any such letter
of demand is despatched. The consequences of making an un-
warranted threat against an alleged infringer who has in fact
committed no infringement, may also be serious . 7
In very many cases a properly couched letter of demand may
in itself effect a complete remedy ; and effectively put a stop to all
further infringement and any further trouble. It may be that the
infringer has been acting bona fide and has no desire to infringe the
patent and is only too ready to desist as soon as the real state of
affairs is brought to his notice. Or it may be that while not acting
entirely in ignorance, and while ready enough to infringe if he can
See Chapter XIX.
81
642
THE LAW OP PATENTS IN INDIA
[Ch. xvn
do so with impunity and without interruption, yet the infringer has
no wish to continue after being found out ; and has no desire to
waste any money defending an expensive and defenceless suit for
infringement. In either case such persons will readily come to
terms : the preoise terms being a matter of negotiation for each
individual case.
Contents of the letter of demand.
It is important to make sure that the claim for infringement is
being made against the right person. It is often found in practice,
where the infringement is a wilful infringement, that a baffling
sequence of Firms and Companies, together with the requisite conse-
cutive series of assignments of the business from one to another of
these, is created. These serve as a screen behind which certain
individuals may seek to continue their infringing activities. In
such a case it may become a matter of some difficulty to obtain
all the necessary information as to the different concerns, such as
the date when each commenced or ceased business and the different
personnel and ramifications of each ; and it may become a matter
of some nicety to affix the liability for particular acts of infringe-
ment on the correct concerns or individuals. Even in more
innocent infringements questions will arise, as between principals
and agents or dealers, on whose shoulders the responsibility for
the infringement should fall. 8
The demands to be made in the letter of demand should with
advantage correspond with the rights to relief which the Patentee
hopeB to establish in his infringement suit in the event of its
becoming necessary to proceed with such a suit ; though it is of
course possible for the parties when attempting to settle the matter
at this stage without going to Court to stipulate for any preferred
terms or conditions which may be suitable to the individual case,
even though such terms might embody conditions or reliefs which it
may not be open to the Patentee to obtain as of right in a suit in
Court. The following points may be referred to in such letter : —
(i) The patentee may state who he understands the addressee
of the letter to be, and how concerned in and how legally liable for
.the infringement complained of. This may call forth a denial or
explanation from the addressee which, if he is in truth free from
Bee page 580.
CJi. XVII]
CONTENTS OF LETTER OF DEMAND
643
liability, may relieve the Patentee of the useless expense of proceed-
ing with a useless suit ; or which in other cases may be of use in
giving the Patentee useful information regarding the true position.
(ii) The letter may then give Notice of the precise nature of
the Patent or Patents held by the Patentee.
(iii) The letter may also give Notice of the precise nature of
the infringements complained of.
(iv) The Patentee may then request the addressee to comply
with the following demands : —
(a) to admit in writing the Patentee’s monopoly (as pre-
viously described).
(b) to discontinue the infringing acts.
(c) to give an undertaking (in terms to be approved by the
Patentee) not at any future time to commit the infring-
ing acts complained of.
(d) to give full particulars of all infringing goods or of all
dealings therewith : with figures of stocks etc.
(0) to furnish full accounts of all profits.
(f) to pay over a sum to cover all such profits when ascer-
tained.
(g) to furnish the names and addresses of all persons
from or through whom the infringing goods have been
received.
(h) to furnish the names and addresses of all persons
to whom the infringing goods may have been sold or
delivered.
(1) to deliver up to the Patentee all of the infringing goods
themselves and also all articles used in connection with
the infringing acts : including any Advertisements,
Catalogues, Price-Lists, Wrappers, Boxes, Cartons or
other packages or packing materials, Marks, Labels,
Dies or whatever be the articles that may be used in
the particular case.
(j) (if suitable) to advertise, or to allow the patentee to
advertise (at the expense of the addressee) in certain
specific papers in the manner of some specified and
644
THE LAW OF PATENTS JN INDIA
[Ch. XVII
approved advertisement which will have the effect of
notifying the public that the addressee has no exclusive
right of the nature which might otherwise have been
indicated by the infringing acts complained of ; and
withdrawing certain specific claims if any such have
been previously made in any respect by the addressee.
(k) to pay all costs, if any, which may have been incurred
by the Patentee (including the costs of the advertise-
ments mentioned.)
(v) The letter should give a reasonable time for the addressee
to comply with the demands made : and should definitely give notice
that unless such demands are complied with within such time the
Patentee will take such steps without further notice as he may be
advised, by suit or otherwise to enforce his rights.
Remedy by civil suit in court.
Where the letter of demand is not effective in leading to a
sufficient remedy or settlement, the Patentee can enforce his rights
by a civil suit in court. This is his final and effective remedy : it is
also, where the infringer is obstinate, his only one.
Final reliefs obtainable in the suit.
It is important here to note the various forms of relief which
it is open now-a-days to the Plaintiff finally to obtain by means of
such suit for infringement. These may be here summarised as
follows : — \
(a) Final injunction.
(b) Damages.
(c) Account of profits (as an alternative to (b) ).
(d) Order for delivery up or destruction of infringing stocks.
(e) Certificate of validity questioned.
(f) Costs.
It is advisable from the outset to bear these matters in mind
since the attainment of one or more of these final reliefs will be the
sole object of the whole suit.
It is proposed however, to postpone the fuller consideration
in detail of these matters to a later portion of this chapter . 9 It
• See PartV.
Ch. XVII]
RELIEFS OBTAINABLE IN THE SUIT
645
being convenient first, to make certain observations regarding
matters preliminary to the suit and regarding the interlocutory
procedure in the suit, since various matters of such nature will in
practice arise at an earlier stage of the proceedings.
Preliminary matters, Interlocutory reliefs and other subsidiary
matters connected with the disposal of the suit.
Before the institution of the suit and between the filing of
the Plaint and the hearing of the suit, to enable the more certain
acquisition finally of the main reliefs abovementioned, certain preli-
minary and interlocutory and subsidiary matters will call for early
consideration. It will also in all probability, become necessary to
ask for certain interlocutory reliefs from the court. It is proposed
next here to consider such matters of procedure under certain main
heads dealing with various sub-heads seriatim as follows : —
Matters relating to the institution of the suit such as may arise
prior to the filing of the Plaint.
1. Parties — Who can sue as Plaintiff.
As to Assignees.
As to Licensees.
As to Aliens.
As to who may sue after the death of the Patentee.
As to joinder of Plaintiffs — where there is more than
one patentee — whether all must join as Plaintiffs.
As to who may sue after the death of one of several
co-patentees.
2. Parties — Who can be sued as Defendant.
As to joinder of Defendants — where there is more than
one infringer.
3. Joinder of causes of action.
As to where there is more than one patent.
As to joinder of breach of patent rights with other
causes of action.
As to the result of non-joinder or mis-joinder of Plain-
tiffs or Defendants.
As to the result of mis-joinder of causes of action.
646
THE LAW OF PATENTS IN INDIA [Ch. XVH
4. Court in which the suit may be brought — jurisdiction —
“District Court”.
5. Limitation.
6. Questions of estoppel and res judicata.
As to where there have been previous proceedings
between the same parties.
As to where there have been previous proceedings
between different parties.
7. Inspection of Defendant's machine before filing of Plaint.
As to inspection of Documents before filing of Plaint.
8. Service of the Writ of Summons in the suit.
These matters will be dealt with in Part II of this chapter.
Other preliminary matters such as may arise prior to the bear-
ing of the suit itBelf.
1. The Plaint.
As to contents.
As to particulars of infringement (particulars of breaches).
As to English practice and Indian practice.
As to whether Plaintiff may give evidence outside his
particulars of broaches.
2. Interim injunction.
As to an ex parte application.
As to An Application on Motion after notice to Defendant.
As to the undertaking as to damages.
As to other terms.
As to an alternative order : an undertaking by Defendant
to keep accounts.
As to oosts.
As to a compromise of the suit with the motion.
A 8 to appeal from an order granting or refusing an
interim injunction.
3. Appearance of the Defendant in the suit.
4. The remaining pleadings — The Written Statement.
As to time for filing.
As to contents.
XVII] OTHER PRELIMINARY MATTERS 647
As to a counter-claim for revocation in the written
statement.
As to particulars of objections.
As to a Written Statement by plaintiff in reply.
5. Further and better particulars.
(As to appeal)
6. Notice to admit facts and documents.
(As to an admitted Brief of correspondence).
7. Amendment of pleadings.
(As to amendment of particulars of breaches or of
particulars of objections).
(As to amendment of the specification).
(As to appeal).
8. Obtaining directions : generally.
9. Application for discovery and inspection of documents.
10. Application for inspection of apparatus.
11. Application regarding the making of experiments : and
for appointment of experts to make experiments and
report.
12. Application for limiting number of scientific witnesses.
18. Application for administering interrogatories.
14. Application for commission.
(As to appeal).
15. Application for hearing with assessors.
(As to costs).
16. Application for hearing of the suit in camera.
17. Application for consolidation of suits.
(As to appeal)
18. Application for stay of the suit.
19. Application for an early date to be fixed for the hearing.
20. Application for judgment on admissions.
21. Application to have the suit placed on the undefended
list.
22. The Special List.
(As to appeal).
649
THE LAW OF PATENTS IN INDIA [Ch. XVII
As to right to file fresh suit after dismissed on
Special List.
23. Questions arising regarding the settlement of the suit.
The abovementioned matters will be dealt with in Part III of
this chapter.
Matters which may arise at or in connection with the hearing
of the suit.
1. Trial of preliminary point first.
2. Application for adjournment.
3. Onus.
4. The right to begin and the right to reply.
5. Inspection by the Court.
6. Whether a party is entitled to a decision on all points.
The abovementioned matters will be dealt with in Part IV of
this chapter.
Matters relating to the final reliefs obtainable in the suit.
1. Final injunction.
As to the nature of the remedy : its extent : not
perpetual.
As to the form of the final injunction.
As to a stay of the injunction where the Defendant
appeals.
2. Damages.
As to the option of the Plaintiff to have either
damages or an account of profits.
As to the distinction between damages and profits.
As to the circumstances in which a decree for damages
may be obtained.
As to the extent of the period before suit over which
damages or profits may be claimed and calculated.
As to the measure of damages if the Plaintiff does not
himself manufacture.
As to the measure of damages if the Plaintiff is him-
self a manufacturer.
Ch. XVII]
PROCEEDINGS SUBSEQUENT TO DECREE
640
As to the effect of a decree for damages in respeot
of the infringing goods.
3. Account of Profits.
4. Order for a Reference to ascertain either Damages or
Profits, as the case may be.
As to the form of the order.
As to inspection for the purpose of the reference.
As to a stay of an enquiry as to damages or an
account of profits where the Defendant appeals.
5. Order for delivery up or destruction of stocks.
As to the nature of the remedy : additional to damages.
As to the form of the order.
As to a stay of the order for delivery up where the
Defendant appeals.
6. Certificate of validity questioned.
As to the nature of this relief : and the effect of a
certificate.
As to the practice regarding the grant of the certi-
ficate.
As to cases where the Defendant does not appear
or abandons the defence.
As to the discretion of the Court.
As to appeal.
7. Costs.
As to costs between Attorney and Client.
The above mentioned matters will be dealt with in Part V of
this Chapter.
Matters relating to further proceedings subsequent to the decree in
the infringement suit.
1. Application for stay of execution.
2. Appeal.
3. Execution proceedings.
4. Contempt proceedings by motion for breach of an injunc-
tion granted in an infringement suit.
As to oases where the second mode of infringement
is not the name as the original infringement
which gave rise to the injunction.
82
660
THE LAW OF PATENTS IN INDIA
[Ch. xvn
As to proceedings against a person who was not a
party to the original suit.
As to the liability in contempt of Directors per-
sonally.
As to cases where the Patent has been amended since
the injunction.
As to the form of the order to be made.
The above-mentioned matters will be dealt with in Part VI of
this Chapter.
PART II
AS TO MATTERS RELATING TO THE INSTITUTION
OF THE SUIT, SUCH AS MAY ARISE PRIOR
TO THE FILING OF THE PLAINT.
These matters are now discussed in this part of this chapter
separately under the headings already indicated at page 645, such
different headings being consecutively numbered merely for con-
venience of reference.
1. Parties — who can sue as Plaintiff.
By Section 29(1) of the Indian Act of 1911 the right of suit is
given only to the patentee. By Section 2(12) the term patentee is
defined as meaning “the person, for the time being entered on the
register of pateiits kept under this Act as the grantee or proprietor
of the patent”. Since the cause of action arising for infringement
is wholly dependent on, and created by, statutory law and since the
right to sue on such cause of action is limited accordingly to such
right only, as is within the Indian Patents and Designs Act of 1911,
it follows that no one not in the position of a person to whom the
right to sue is given under Section 29(1) of that Act can bring any
suit for infringement. It would follow then that no mere equitable
owner of the monopoly rights of a patent is entitled to bring a suit
in his own name.
The statutory definition in Section 2(12) which was inserted in
the Indian Act of 1930, now precludes any person suing except the
person whose name is on the register. If any person though not
registered, should consider that he is rightfully entitled to the patent,
Ch. XVII]
WHO CAN SUE AS PLAINTIFF
851
the proper course will now be for him first to bring an application
for rectification of the register. 10
As to Assignees.
From what has been said it follows that where an assignment
of a Patent has been perfectly effected except that the name of the
assignee has not been entered on the register of patents, such
person would not be entitled to sue in his own name.
Even where there has been a registration of the assignee as
patentee, questions may arise as to the validity of such assignment
and as to the right of such assignee to sue for infringement. It is
unnecessary here further to discuss these matters which have
already been considered in Chapters XV and XVI in connection
with the question what constitutes an infringement and the defences
thereto. 11
Where there has been an assignment after the date of the
institution of the suit, there appears to be nothing to prevent the
original Plaintiff from continuing the suit in his own nnme. But it
has been held in « England that the assignee may be added as
a party. 12
It is submitted that in India also such assignee may be so added
as a Plaintiff if not as coming directly within Order 1, Rule 1, since
it may be said that in such circumstances there is no right to relief
in the Assignee, yet as being within Order 1, Rule 10 of the Civil
Procedure Code.
As to Licensees.
It follows also from what has been said above that a licensee,
since he is not the registered patentee, cannot sue in his own name.
It is manifest that no mere personal agreement, such as is the licence
between the patentee and the licensee, can confer rights on the
licensee against the public. 13
It may be that his agreement with the patentee under which he
obtained his licence contains a clause making it obligatory for the
10 See remarks at pages 542 (No. 24), 582, and 494.
11 See pages 542, 582 and 583.
13 See Bates Valve Dag Co. v. B. Kershaw rib Co. (1920) Ltd. (1933) 50.
R. P. C. 43.
18 See Heap v. Hartley (1889) 6. R. P. C. 495 (0. A.) at p. 500 : Wingquists
Patent (1923) 40. R. P. C. 261 at p 268. See Terrell p. 254.
THE LAW OF PATENTS IN INDIA
[Ch. xvn
patentee to institute suits himself or to allow suits to be instituted
in the name of the patentee when required so to do by the licensee.
Otherwise it is to be observed that the licensee may be without
adequate remedy against infringers . 14
It has been held in a recent case 15 that a licensee might be
joined as a co-Plaintiff with the patentee in a suit for infringement.
As to Aliens.
It has been held in England that an alien enemy cannot insti-
tute or maintain an action in the Courts as Plaintiff ; nor in the case
of joint ownership of a patent as co- Plaintiff . 16
There is nothing to prevent an alien from making application
for and obtaining a patent. There is equally nothing to prevent an
alien who is not an enemy-alien suing as Plaintiff for infringement
in his own name . 17
14 There is one class of case which forms an exception in England to this
general rule that a licensee is not entitled to sue. This class of exceptional cases
arises purely under Section 27 and Section 24 of the English Act which refer to
the rights of persons obtaining licences of right or licences on grant from the
Controller in cases where there has been an abuse of monopoly on the part of the
patentee. Under Section 24(l)(d) and Section 27(3)(b) such a licensee is given a
statutory right of bringing a suit which will enable him fully to protect the
monopoly of the patent in which he is interested. There are certain provisions,
crudely stated, in the Indian Patents & Designs Act of 1911 in Sections 22 & 23,
which give certain powers to the Governor-General in Council in certain cases,
where an abuse of monopoly on the part of a patentee is established, to grant
compulsory licences to applicants. But no details are formulated in the Act as
to the rights of such a licensee after he shall have obtained such a compulsory
licence. There appears to be no provision in the Act to enable him either to
compel the patentee to bring a suit or to bring a suit in his own name in such a
case. In view of the express provisions of Section 29(1) of the Indian Act (above,
already referred to) it would seem clear that such a compulsory licensee in British
India has no right to sue in his own name any more than any other licensee,
and accordingly no power to take any adequate steps to protect the infringement
of the patent in which he is interested.
18 Trico Products Corpn. and Trico-Folberth Ltd . v. Roma c Motor Accessories
Ltd . (1934) 51. R. P. C. 90.
18 See Porter v. Freudenbcrg 1915. 1. K. B. 857 ; Actiengesellschaft fur
Anilin Fabrikation in Berlin v. Levinstein Ltd . (1915) 32. R. P. C. 140 (C. A.) ;
compare Mercedes Dainler Motor Co. Ltd . v. Maudslay Motor Co. iAd , (1915) 32.
R. P. C. 149.
ir See also what has been said above as to applications for patents and
applications on a communication from abroad : see page 336, also page 347.
ch. xvn]
AFTER DEATH OF THE PATENTEE
653
As to who may sue after the death of a patentee — devolution of the
patent as his personal estate — survivorship of the right to sue.
In view of the terms of the grant being expressed as being to
the patentee himself and to his legal representatives, it is clear that
the patent rights created by the grant do not cease on the death of
the patentee.
It is well settled that the property in a patent passes by
devolution of law on the death of the patentee, as his personal
property.
It appears also to be settled even under English Law in the
United Kingdom that a right to sue for infringement which has
accrued in the lifetime of the patentee survives after his death to
his legal representatives. 18
The general doctrine “ actio personalis moritur cum persona ”
does not apply in British India, in view of the express provisions of
the Section 306 of the Indian Succession Act (Act XXXIX of 1925)
which are as follows : —
“306. Ail demands whatsoever and all rights to prosecute or
defend any action or special proceeding existing in
favour of or against a person at the time of his
decease, survive to and against his executors or ad-
ministrators ; except causes of action for defamation,
assault, as defined in the Indian Penal Code, or other
personal injuries not causing the death of the party ;
and except also cases where, after the death of the
party, the relief sought could not be enjoyed, or grant-
ing it would be nugatory”. 19
Thus it has been held that even where a suit for malicious
prosecution was instituted by the deceased, the right to sue did not
abate with his death. 20
la Bee Fletcher Moulton pp. 6 and 7 and ace Baity &• Sons v. Dalton (1887)
35. Ch. D. 700 (as to infringement of a trade mark) also E. M. Bowden’s Patents
Syndicate Ltd. v. Herbert Smith <f; Co. (1904) 21. K. P. C. 433. Contrast the
position where the patent has passed not by death but by assignment : see page
592 above.
10 e.f. Shari fa v. Munekhar (1901) 25. Bom. 574.
10 Krishna v. Corporation of Calcutta (1904) 31 Cal. 993.
664
THE LAW OF PATENTS IN INDIA
[Ch.xvn
Similarly, it is submitted, it is clear that in British India a
right to sue for infringement of a Patent, where the Patentee institu-
ted a suit before his death, will clearly survive under the section.
Equally it seems clear that in British India a right to sue for
infringement will also survive to his legal representatives even if
no suit was instituted before the patentee’s death ; in view of the
clear terms of this section.
As to joinder of Plaintiffs — where there is more than one
patentee — whether all must join as Plaintiffs.
When there are two or more persons who are co-owners of a
patent and it is desired to institute a suit for infringement of that
patent, it may become necessary to decide whether it is essential
under Indian Law that all the co-owners should be joined as Plaintiffs
or not. It is submitted that the only safe course is to join all
co-owners of the patent as Plaintiffs.
It is true that the contrary view is adhered to in Terrell (1934 :
8th edn.) at p. 369 where it is suggested that according to the law in
England one co-owner may sue for infringement without joining the
others. But as to the law in England, of the two cases cited there,
the one Turner v. Bowman (1925) 42. R. P. C. 29 hardly appears to
be a strong authority for the proposition mentioned ; though it does
appear that A st bury J. did in that case grant an injunction when
there was only one of two co-owners of the patent before the Court.
There appears to have been no argument on the point in the case :
see the report a't.pagc 41. The other case, Sheehan v. Great Eastern
Railway Co., (1880) 10. Ch. D. 59 was a claim by one of several co-
owners, suing alone as Plaintiff, not for iufringement but for payment
of royalties. For the contentions raised in that case reference may
be made to the arguments at pages 60-02 of the report. The judgment
is certainly very distinct and definite on the point that the one co-
owner was entitled to sue alone for his share of royalties. Actually
in that case it was not necessary for the Court to decide that point ;
in view of its being found as a fact that for the period during which
the patent had been used by the Defendants the Plaintiff had in fact
been sole owner of the patent ; the assignment of shares which was
relied on by the Defendants not having taken place until after that
period. It may be said therefore that the absence of an appeal
against that decision is not conclusive as to the value of the reason-
Ch. XVII)
WHERE MORE THAN ONE PATENTEE
655
ing on which the decision was purported to be based. It is to be
noted too that case ended in a compromise by consent. Nevertheless
it must equally be conceded that Vice Chancellor Malins stated his
decision on the point in question with all the force and definiteness
possible and that his decision on that point appears never to have
been since definitely overruled or criticised as being an incorrect
statement of the law fn England. Passages of his judgment which
are material are as follows
“The Defendants take this objection, that the Plaintiff cannot
sue alone — that he ought to have made his co-owners parties
to the action, and they therefore object to the action
proceeding in its present form. There are throe defences
to this objection. I will take the second first, which is,
that one of several owners of a patent is at liberty to sue
alone, and if that is a valid answer, then the other two
defences will be needless. My opinion is that one person
interested in a patent is entitled to sue, without making his
co-owners parties to the action, either for an injunction or
for an account. I might put a case of this kind : Suppose
a person is entitled to an estate jointly with others, and a
wrongdoer insists upon cutting down timber upon the
estate, what is there to prevent one owner from suing
without his co-owners being parties to the action ? He
certainly would be entitled to sue to prevent the wrong
being done. It is in principle the same case. Then aH to
authority, we have a passage from Mr. Justice Lindley's
book on Partnership 21 Vol. I, pp. G8, 69, where he says
“cases may nevertheless arise in which justice may be done
by allowing each co-owner (of a chattel) to make what he
can and to keep what he may get. This may occur where
the chattel is such that each co-owner can, in fact, enjoy
his rights to the full extent without the concurrence of the
other owner (<?.</., where the chattel is a patent for an
invention). In the case of a patent belonging to several
persons in common each co-owner can assign his share and
sue for an infringement. That is very distinct, but there is
a still stronger authority in the case of Dent v. Turpin. 22
21 4th edn.
THE LAW OF PATENTS IN INDIA
[Ch. XVII
There the Plaintiff and another person carried on distinct
trades at different places of business, both having derived
from a common predecessor the right to use the name of
Dent as a trade-mark. The Defendant infringed the right
of the Plaintiff, and it was held on demurrer that the
Plaintiff, without averring special damage, might sue alone
for an injunction, and for the delivery up of the articles
to have the name erased ; and it was further held that
he might sue alone for an account of profits made by the
Defendant out of the articles so marked, and for payment
to the Plaintiff of such part of such profits as the Plaintiff
should be entitled to. Therefore both on principle and
authority I am justified in saying that the Plaintiff is
entitled to sue alone I wish it to be distinctly
understood that my opinion is that one of several co-
owners of a patent of this sort is entitled to sue by himself
alone.”
A similar principle that one of several co-owners can sue alone,
has also been applied in certain circumstances as to copyright and as
to a trade mark . 23 But it is of interest to note that in another English
case 24 it was held that a grant of Patent to two or more persons,
their executors, administrators and assigns creates a joint interest
of the nature of a joint tenancy in the Patent and not an interest
in common. On this point the following passage of the judgment
of Cozens-Hardy J. in that case was as follows : —
“On the construction of this grant I think the two patentees
took a joint interest, which passed by survivorship to Gibbs on the
death of Gaulard. It was scarcely disputed that a grant, whether by
the Crown or by a private individual, of any ordinary species of
property to A. B. and C. D., their executors, administrators, and
assigns, would create a joint tenancy or joint interest, and not an
interest in common. This is not a rule of tenure or of real property
** See Lauri v. Renad (1892) 3. Ch. 402 (though as to this case see the
comments in Copinger on Copyright (7th edn : 1936) at p. 191 ; and Dent r.
Turpin 30. L J. Gh. 495 ; and Terrell (ibid) at p. 370.
* 4 National Society for the Distribution of Electricity by Secondary Gene-
rators ▼. Gibbs, (1899) 2 Gh. 289 at p. 299 (a case decided prior to the operation
of Sec. 37 of the English Act of 1937) also see (1900) 2 Ch. 280, or 16. R. P. C.
339 and 17. R. P. C. 302.
Ch. XVII]
A JOINT OWNERSHIP
65?
law. It applies to an assignment of a policy of assurance as muoh
as to an assignment of a term of years. But it was urged that
letters patent are of such a peculiar quality and nature that different
principles of interpretation ought to be applied. I am unable to
follow this argument. The right or privilege granted by the Crowu
by the letters patent is an exception from the general prohibition
contained in the Statute of Monopolies. It is for all purposes to be
regarded as property. It passes on bankruptcy as part of the assets
of a bankrupt. On the death of a patentee, duty is payable on it as
part of the assets of the deceased, and I can see no justification in
principle, nor has any authority been produced for holding that a
grant of letters patent to two persons, their executors, administra-
tors, and assigns, creates anything more than a joint interest which
will survive on the death of one of them, unless there has been a
severance of the joint interest. An elaborate argument was
addressed to me with a view of persuading me that survivorship
between joint tenants is unreasonable, and cannot have been intended
by the Crown. It is no doubt true that courts of equity have laid
hold of slight circumstances to turn a joint tenancy into a tenancy in
common, and there was at one time an idea that in equity all joint
tenancies would be construed as tenancies in common. This, how-
ever, is clearly not so. I may refer to the judgment of Sir William
Grant in Aveling v. Knipe 2i (1) It must not be forgotten that it is
at any time open to two to terminate the joint interest and to create
a tenancy in common. A patent can be owned by tenants in
common : see Smith v. London and North Western Jty. Co . 2 ® and
Steer v. Rogers. 27 It follows therefore that in my judgment
Gaulard’s representative is not a proper party to the action in so far
as it seeks an order for the assignment of the patents, inasmuch as
the whole interest in the patents is vested in Gibbs as the survivor
of the two joint patentees’".
Under Section 37 of the current English Patents & Designs
Act it is expressly provided that "where a patent is granted to two
or more persons jointly, they shall unless otherwise specified in the
a * (1815) 19 Ves 441. Cf. also Walton v. Jxivater (1860) 29. L. J. C. P. 275
at p. 280.
*• 2.E.&B.69.
*» (1893) A. C. 232.
83
658 THE LAW OF PATENTS IN INDIA [Ch. XVII
patent, be treated for the purpose of the devolution of the legal
interests therein as joint tenants, but subject to any contract to the
contrary, each of such persons shall be entitled to use the invention
for his own profit without accounting to the others, but shall not be
entitled to grant a licence otherwise than with their consent or in
accordance with directions given under this section, and if any suoh
person dies, his beneficial interest in the patent shall devolve on his
personal representatives as part of his personal estate." (Then
follow under sub-sections (2), (3), (4) & (5) of the same section
various provisions for giving relief to a joint patentee in cases
where his co-patentees refuse to co-operate with him). The section
however does not expressly touch upon the question whether such a
co-patentee can bring a suit for infringement alone or not.
The legal position of co-owners in British India when a Patent
is granted to two or more persons jointly is similarly expressly
referred to in Section 37 of the Indian Patents & Designs Act of
1911, the provisions of which are in the following terms : —
“37. Where, after the commencement of this Act, a patent is
granted to two or more persons jointly, they shall, unless
otherwise specified in the patent, be treated for the purpose
of the devolution of the legal interest therein as joint
tenants, but, subject to any contract to the contrary, each
of such persons shall be entitled to use the invention for
his own profit without accounting to the others, but shall
not'be entitled to grant a licence without their consent,
and, if any such person dies, his beneficial interest in the
patent shall devolve on his legal representatives/’
It is to be noted that both in this Indian Section, equally as in
the corresponding English section, it is only expressly provided that
the joint tenancy is to exist “for the purpose of the devolution of the
legal interest” in the patent. The section does not positively go
further than that. On the other hand there is nothing in this
section or elsewhere in the Act to negative such oo-owners holding
the Patent as joint tenants in other respects also apart from the
devolution of the legal interest. Accordingly it is submitted that in
the absence of any express provisions to the contrary the position
will he that such co-patentees do hold as joint tenants ; and must be
treated as such in regard to any question that arises concerning the
ch. xvn]
OR AS TENANTS IN COMMON
necessity of their being all joined as parties in a suit for the infringe*
ment of their patent.
It then, the interest of the co-owners of a Patent is, as
directly held in the judgment now cited, to be ordinarily the case, a
joint interest, it follows, it is submitted, that in any suit for infringe*
ment of that Patent, all the co-owners of that patent must sue
together.
At the same time it is to be noted that it has been also held as
was confirmed in the same case, that in certain circumstances as
when there has been a clear alteration of the position into that of a
tenancy in common, a Patent may be held by co-owners as tenants
in common . 28 If then in any given case the position could be clearly
established that the co-owners held as tenants in common, it would
follow, it is submitted that in such a case at least, a single co-owner
could sue alone for infringement.
In view of the difficulty of being able to establish affirmatively
that in a particular case the co-owners hold the patent as tenants in
common and not as joint tenants and in view of the decision already
referred to that an ordinary grant of a Patent will in the ordinary
way create not an interest in common but a joint interest, it appears
clear that in most cases the only safe course, at least, is for all the
co-owners of a Patent to be joined as Plaintiffs in any suit for its
infringement.
In India this proposition will apply with equal foroe. Where,
as ordinarily, the co-owners of a Patent hold their interest as a joint
interest it would appear to be just as necessary for reasons not of
procedure but of substantive law that all the oo-owners are parties
to the suit as in a case regarding joint family property where it is
necessary that all the members of the joint family are required to be
joined . 28
— »■ T— — r
98 Bee page 657 above.
98 Bee Mulla's Civil Procedure Code (10th edn. 1934) at p. 451. Bee also
Section 106 of the Indian Succession Act of 1925 ; and A. C. Dutt’s Indian
Succession Act at page 236. Also see, for certain general remarks, the comments
of the late Sir Dioshaw Mulla on Section 45 of the Indian Transfer of Property
Act (Act IV of 1862) (the section itself refers only to immovable property). Sec
also Fletcher- Moulton at p. 12 note (i), (where however, it is suggested that whe-
ther the co-owners are in the position of joint tenants or of tenants in common
they ought in either case all to be joined).
660
THE LAW OF PATENTS IN INDIA
[Ch. xvn
Since it is not possible to join a person as co-plaintiff unless
he consents, in the event of any of the co-owners of the Patent
refusing to be joined as co-plaintiffs, then they should be joined as
Defendants 30 , so that the primary object may Btill be attained of
having before the Court in the Buit all the oo-owners and of putting
the Court thus in a competent position to pass an effective deoree
in regard to the patent rights in suit, which it otherwise would be
unable to do.
As to who may sue after the death of one of several co-patentees
— devolution by survivorship.
From the terms of Section 37 of the Indian Patents & Designs
Act of 1911 abovo cited, it seems that there will be a survivorship
to the surviving co-patentees or co-patentee on the death of one co-
patentee, sinoe such survivorship is one of the essential elements of
the joint tenancy mentioned in the section. On this footing it would
seem that the surviving patentee or patentees would be entitled to
sue alone without joining as co-plaintiffs the legal representatives of
the deceased co-patentee.
On the other hand the further provisions of the section make
it clear, that the estate of the deceased co-patontec does not lose all
rights in the Patent on his death, but that, on the contrary, his legal
representatives will be entitled to the beneficial interest in the Patent
The result of this is, that the surviving patentee or patentees must
be considered in law to hold the joint interest formerly owned by
the deceased co-patentee in trust for his legal representatives. In
these circumstances it is submitted that such legal representatives,
though not necessary parties to a suit for infringement (in the sense
that the suit would be bad for non-joinder without them) are never-
theless persons, who may be joined, if this be desired for any reason,
as co-plaintiffs also.
2. Parties — who can be sued as Defendant.
The question of the liability of a particular person for an
infringement has already been considered in Chapter XV ; and need
not here be further discussed. 31
*° See Maphabala v. Kunhanna (1898) 21. Mad. 373.
11 See page 570 to 582 above ; also Chapter XIV at page 541 (Noe. 15 to 23).
ch. xvn]
WHO CAN BE SUED AS DEFENDANT
661
As to joinder of Defendants — where there is more than one
infringer.
By Order 1, Rule 3 of the Civil Procedure Code it is provided
as follows : —
“AH persons may be joined as Defendants against whom any
right to relief in respect of or arising out of the same aot
or transaction or series of acts or transactions is alleged
to exist, whether jointly, severally or in the alternative,
where if separate suits were brought against such persons
any common question of law or fact would arise.”
The question arises, where a Plaintiff is owner of one patent in
respect of which he claims that various persons have committed
separate infringments, whether he may join them all or at least more
than one of them in a single suit. Since he has to prove his patent
and that he is the patentee thereof, it is clear that this is a “common
question of law or fact” within the scope of the rule. But the other
test laid down in the rule must also be fulfilled “that his right to relief
in such case must arise” out of the same act or transaction or series
of transactions. This being so it is submitted that it would probably
be held that even though the infringements complained of by the
Plaintiff were all in respect of one and the same patent yet the
common factor that the patent was the same in each instance would
not, of itself be enough to bring the different infringements within
the rule so as to enable the Plaintiff to sue therefor in one and the
same suit. The result is then that where entirely unconnected
infringements of one and the same patent have been committed by
different infringers, it is not open to the Plaintiff to join them as
Defendants ; but if a case arises where the various complaints of the
Plaintiff are based on things done, whether jointly or severally by
different persons so as to comprise what is really the same act or
transaction or series of transactions, such persons may be joined as
Defendants in the same suit. Suoh a -case may arise where the Plain*
tiff desires to sue both the importer and the selling agent or distri-
butor of the importer ; it will be open to him to sue both in one
suit.
It is to be noted that under Order 2, Rule 6 of the Codo of Civil
Procedure it appears that the Court has power, in spite of the
662 THE LAW OP PATENTS IN INDIA [Ch. XVB
joinder, to order separate trials if it should consider this more
convenient. 82
3. Joinder of causes of action— where there is more than one
infringement of the same patent
By Order 3, Rule 1, of the Code of Civil Procedure it is pro-
vided as follows. : —
“Save as otherwise provided, a Plaintiff may unite in the same
suit several causes of action against the Bame Defendant,
or the same Defendants jointly H
It is clear therefore that where there is more than one infringe-
ment of the same patent by the same Defendant the Plaintiff may
sue in respect of all such infringements in one suit.
As to where there is more than one patent.
It not infrequently happens that a Plaintiff is the holder of
several patents relating to one product ; and that a single article com-
plained of as an infringement may be claimed to be an infringement
of more than one patent of the Plaintiff. In such a case where the
proposed Defendant is one and the same person the Plaintiff may-
properly sue for the infringement of all or several of his patents
in the same suit.
In certain of the cases mentioned in the note below as many as
23 different patents have been sued upon in the same suit. In such
a case it may be that the Plaintiff will sue in the alternative for
infringement of one or more of the patents, since it may be that in
the circumstances of the case it will be found in the end that only
some of his patents, though he may not at the time of the filing of
the suit be in a position to know which, have been infringed. 83
Where either there is more than one patent of the Plaintiff in
respect -of which he complains and infringement by different persons
or if there is more than one unconnected infringement of the same
" For consideration of the joinder of different causes of action against the
same defendant see further below.
" See for example a series of oases in which the Saccharin Corpn. Ltd. was
the Plaintiff: reported in (1900) 19. R. P. 0. 169 (C.A.) (1903) 20.B.P.C.454
(C.A.) ; (1903) 20. R. P. C. 611 ; (1903) 22. R. P. 0. 246. As to consolidation of
..separate suits see Part III of this chapter below, . . . _
Ch.XVU] JOINDER OF CAUSES OF ACTION 663
patent by different persons it seems olear that the Plaintiff will be
required to bring separate suits for his separate causes of action.
As to Joinder of breach of patent rights with other causes of
action.
Cases in which it may be desired to join a cause of action for
infringement or other breach of patent rights with some totally
different cause of action independent of any question of patent
rights seldom in practice arise. The wording of Order 3, Buie 1
(abovementioned) would however seem wide enough to allow of such
joinder of such causes of action in one suit against the same
Defendant : for example a cause of action for infringement of patent
with a cause of action for passing off or with a cause of action for
breach of some contract subsisting between the parties.
As to the result of non-joinder or mis-joinder of Plaintiffs or
Defendants.
Prospective litigants or their advisers should not be misled
into any careless optimism by the words of Order 1, Rule 9 of the
Code of Civil Procedure : the wording of which is as follows : —
“No suit shall be defeated by reason of the mis-joinder or non-
joinder of parties, and the Court may in every suit deal
with the matter in controversy so far as regards the rights
and interests of the parties actually before it/’
Though the actual wording of that rule at first sight appears
wide enough to protect the litigant from losing his suit in the eveut
of almost any mistake of mis-joinder or non-joinder, it must be borne
in mind that this rule of the Civil Procedure Code is a more rule of
procedure and cannot and does not affect the substantive law. Thus
where an omission to join a party goes to the substance of the suit so
that a decree cannot be made without his presence as a party before
the Court, this rule of procedure will avail nothing and the suit
will be lost. The following illustrations of such cases may be
noted.
Non-Joinder of Plaintiffs.
A suit by executors, trustees, co-owners or partners (when
in the individual names of suoh partners) for the recovery of
property in which they are jointly interested, will not lie unless all
664
THE LAW OF PATENTS IN INDIA
(Ch. XVII
such persons are joined as co-plaintiffs. It is impossible, for reasons
of substantive law, for the court to make any decree in regard to
such property in question, whether it be a patent or patent rights or
anything else, in their absence from the suit. Unless therefore the
suit is amended before decree so as to join all such persons as
parties, the suit is bound to be dismissed. On application being
made, the Court will in ordinary cases of course allow the plaint to
be amended and the parties to be joined as Plaintiffs : but if the
Plaintiff in spite of objection raised persists in the suit without
joining the other parties, the suit is bound to be dismissed. And it
has been held that he will not be allowed to remedy the defect on
appeal . 34
Non-Joinder of Defendants.
Similarly in a suit against joint executors, all must be joined
or the suit will be dismissed . 35
Mis-Joinder of Plaintiffs.
Where more persons have been joined as Plaintiffs than are
legally interested so as to be properly entitled to be so joined, the
result may be that the suit may be dismissed as against such persons
with costs. Such mig-joinder will seldom, if ever, result so as in any
respect to affect the other Plaintiffs or to lose them the suit or any
rights.
Mis-joinder of Defendants.
Similar remarks apply. In practice the risk of joining more
than what may turn out to be the proper persons as Defendants in a
suit is of course the very serious risk that the Plaintiff may be
ordered to pay all the costs of such persons who may be found to
have been improperly joined. Though it is no doubt quite commonly,
and very rightly, a good defence in a criminal case for one of
several aooused persons to object, on appeal, that he should not have
been tried together with the other co-accused — it may be for reasons
through which he was deprived of the benefit of certain evidenoe
14 See (1921) 44. Mad. 43 ; (1923) 41. Mad. L.J. 249 ; (1922) 42. Mad LJ. 133 ;
(1933) 65 Mad. L. J. 290 ; Niaba Kumar v. Radhashyam (1931) 35. C. W. N. 977.
" And compare as to waiver of objection. See Kantiekandra v. Radha
Raman (1930) 34. 0. W. N. 275 ; see also (1932) 63. Mad. L. J. 369.
Ch. XVII]
WAIVER
665
which might otherwise have been available to him — yet it is seldom y
if ever, that a Defendant can obtain the dismissal of a civil suit or
obtain any result affecting anything beyond the costs of the suit by
taking a point of mis-joinder of Defendants.
Waiver.
In regard to non-joinder and mis-joinder of parties Order 1,
Rule 13 may also here be noted : —
“All objections on the ground of non-joinder of parties shall be
taken at the earliest possible opportunity and in all cases
where issues are settled, at or before such settlement,
unless the ground of objection has subsequently arisen,
and any such objection not so taken shall be deemed to
have been waived ”
This rule it is true has often been relied on in cases where
such an objection has been sought to be taken for the first time on
appeal. 3 ®
But it is submited that the same remarks as already made in
regard to Order 1, Rule 9 will also be applicable in regard to this
rule ; and that if in fact the position is such that according to the
substantive law a decree cannot properly be made and such that no
waiver by the mere parties of their objection could affect that
position, then this rule also may not avail to prevent the suit being
lost for non-joinder in such cases, even though the objection be taken
on appeal and not before.
As to the result of mis-joinder of causes of action.
Reference should be made to the following provisions of the
Code of Civil Procedure : —
Order 2, Rule 1.
Order 2, Rule 2.
Order 2, Rule 3.
Order 2, Rule 5.
Section 99.
Order 2, Rule 0.
See (1882). 8. Cal. 277 ; (1891) 14. Mad. 498 ; (1902) 26. Bom. 301 ; (1891)
16. Bom. 119 at 122 ; Adjai Coal Co. v. Panna Lai (1930) 57. Cal. 1341 (P. C.).
84
THE LAW OF PATENTS IN INDIA
[ch. xvn
If the Defendant objects to the frame of the suit on the gronnd
of mis-joinder and makes an application, the Court may direct the
Plaintiff to make the requisite amendment under Order 6, Rule 16.
Then if the Plaintiff does not amend in the requisite manner, the
Court may order the stay of the suit.
The Court also has power it seems in an extreme case, if
necessary, under its inherent powers, to direct the Plaintiff to elect
on which cause of action he will proceed. Suoh a case is seldom
likely to arise unless there has been mis-joinder of Defendants as
well as of causes of action where the question would be, principally,
for the Plaintiff to elect against which defendant he wishes to
proceed. The Court may stay the suit, presumably, if the Plaintiff
refuses to exercise his election.
Waiver.
There is a rule in regard to objections to causes of action
almost precisely similar to that already mentioned in regard to
objections to parties. It is Order 2, Rule 7 which reads as
follows : —
“All objections on the ground of mis-joinder of causes of action
shall be taken at the earliest possible opportunity and, in
all cases where issues are settled at or before such settle-
ment, unless the ground of objection has subsequently
arisen, and any such objection not so taken shall be
deemed to have been waived.”
It will be seldom, if ever, that mis-joinder of causes of action
will interfere with the Court’s capacity to pass a decree ; and there
is little likehood of any case arising where the provisions of the
Code of Civil Procedure in regard to joinder of causes of action as
apart from joinder of parties will come in any respect into conflict
with any principles of substantive law. Any objections to mis-
joinder of causes of action will be merely matters of procedure.
Accordingly delay under Order 2, Rule 7 in making such an objection
will clearly under the Rule be fatal to the objection.
There is no express rule in the Civil Procedure Code in regard
to mis-joinder of causes of action similar to Order 1, Rule 9 in regard
to mis-joinder or non-joinder of parties. The reason is presumably
beoause it is inconceivable that any suit should be dismissed or lost
Ch. XVII]
IN APPEAL
667
for mia-joinder of causes of action. The general provisions of
Section 99 are however applicable.
The reason why it may be important for a Plaintiff to take
thought not to fie his suit without including claims for all the
reliefs open to him is not because there is any risk of the suit
which he does file being dismissed or prejudiced in regard to the
claims made in the suit ; but because of the risk that he may be
shut out at a later stage from making those claims which he has
omitted to include in the original suit at a later stage in other
proceedings. Reference may be made to Order 2, Rules 1 and 2. But
it will be noticed that provided that the claims omitted from the
suit are entirely separate causes of action from those included,
there will be no risk of his being shut out from later pursuing them
in a separate suit. It is only when he neglects to sue for all the
reliefs to which he is entitled as may arise from the same cause of
action as that forming the subject matter of his claim made in the
suit, that he will be in any danger of being shut out from olaiming
such reliefs in another suit or proceeding. However, as it may in
many cases be a moot point whether the other claimB not included
in the suit are in their nature different causes of action or whether
they may properly be described as different reliefs dependent on the
same cause of action, it will in most cases, where any claims are not
desired to to be included in the one suit, be advisable to include a
prayer in the plaint for such leave of the Court as is contemplated
under Order 2, Rule 2 (3) ; that is to say for leave to reserve the
right to sue afterwards for such reliefs as have not been sued for in
the suit which is being proceeded with.
As to appeals.
Before passing from the question of non-joinder and mis-joinder
of parties and of causes of action it may be as well here to note the
provisions of Section 99 of the Code of Civil Procedure in regard to
appeals. This section is worded as follows : —
“99. No decree shall be reversed or substantially varied, nor
shall any case be remanded, in appeal, on account of any
mis joinder of parties or causes of action or any error,
defect or irregularity in any proceedings in the suit, not
affecting the merits of the case or the jurisdiction of the
Court.”
THE LAW OF PATENTS IN INDIA
[Ch. XVII
This gives statutory'support to what would in any event be the
natural tendency of any Court of Appeal — not to upset a decision of
the lower court merely for an objection of mis-joinder or non-joinder
unless the effect of the decision of the lower court affected matters
more serious than mere questions of the relative convenience of
different possible procedures for disposing of the case.
4. Court in which the suit may be brought — jurisdiction — “District
Court.”
The wording of Section 29(1) by which the right to bring a
suit for infringement is conferred to the effect that : — “a Patentee
may institute a suit in a District Court having jurisdiction to try
the suit”
It should be noted that under Section 2(G) of the Act of 1911
the expression District Court has the meaning assigned to that
expression by the Code of Civil Procedure 1908 (Act V of 1908).
And that under Section 2(4) of the Code of Civil Procedure the term
“district” means “the local limits of the jurisdiction of a principal
civil court of original jurisdiction (thereinafter called a “District
Court”) and includes the local limits of the ordinary original civil
jurisdiction of a High Court.”
Therefore a suit for infringement can be brought in a High
Court in any case where a High Court has jurisdiction under its
ordinary original jurisdiction to entortain the suit. 37 It will be
essential before filing the Plaint to consider the question of the
extent and limits of the jurisdiction of the Court in which it is
proposed to su v e.
Jurisdiction of the High Courts.
In the case of the High Court of Calcutta its ordinary original
civil jurisdiction, which is the jurisdiction under which any suit for
the infringement of a Patent will be brought in that Court, is defined
in Clause 12 of the Letters Patent for the High Court of Judicature
at Fort William in Bengal dated 28th December 1865. Though this
clause is one of the best known clauses of that well-known charter it
may nevertheless be convenient to set it out here in full. It reads
as follows : —
“12. And We do further ordain, that the said High Court of
” Bee also Kedernatk Mondal v. Qonesh Chandra Adah (1907) 12. C. W. N.
446 (under the old Act of 1888).
Ch. XVII]
JURISDICTION OF HIGH COURTS
669
Judicature at Fort William in Bengal, in the exercise of
its ordinary original civil jurisdiction, shall be empowered
to receive, try, and determine suits of every description,
if, in the caBe of suits for land or other immoveable
property, such land or property shall be situated, or in all
other oases if the cause of action shall have arisen, either
wholly, or, in case the leave of the Court shall have been
first obtained, in part, within tho local limits of the
ordinary original jurisdiction of the said High Court, or if
the Defendant at the time of the commencement of the
suit shall dwell, or carry on business, or personally work
for gain within such limits ; except thnt the said High
Court shall not have such original jurisdiction in cases
falling within the jurisdiction of the Small Cause Court at
Calcutta, in which the debt or damage, or value of the
property sued for, does not exceed One hundred rupees.”
The precise effect of the terms of this clause and the precise
meaning of the wording thereof has been tho subject of much argu-
ment from time to time. It is convenient therefore to note what is
now the generally accepted reading of the clause. The class of
cases triable may be paraphrased thus : —
A. Suits for land or other immovable property : —
1. If such land or property shall be situated
wholly within the local limits of the ordinary
original jurisdiction of the said High Court.
Or, 2. If such land or property shall bo situated
in case the leave of the Court shall have been first
obtained in part within such limits.
B. All other cases (that is to say including suits for the infringe-
ment of a Patent) : —
1. If the cause of action shall have arisen wholly
within the local limits of the ordinary original jurisdic-
tion of the Baid Court.
Or, 2. If the cause of action shall have arisen in case the
leave of the Court shall have been first obtained, in part,
within such limits.
Or, 3. If the Defendant at the time of the commencement of the
suit shall dwell within such limits.
670
THE LAW OF PATENTS IN INDIA
[Ch. XVU
Or, 4. If the Defendant at the time of the commencement of the
suit shall carry on business or personally work for
gain within such limits. 38
For authority that the Defendant’s residence within the juris-
diction is enough, without more, to found jurisdiction, see Srinivasa
Moorthy v. Venkata Varada Ayyangar , 39
As for the exception in regard to cases falling within the juris-
diction of the Small Cause Court at Calcutta in which the debt or
damage or value of the property sued for docs not exceed one hundred
rupees, there is no need to trouble for present purposes with this
exception, since the Calcutta Small Cause Court has no jurisdiction
to try infringement suits ; it being expressly provided by Section
19(n) of the Presidency Small Cause Court Act (Act XV of 1882)
that the Small Cause Court shall have no jurisdiction in “suits
for compensation for the infringement of a patent ” and by
Section 19(i) that the Small Cause Court shall have no jurisdiction in
“suits to obtain an injunction.”
The corresponding ordinary original civil jurisdiction of the
High Court of Bombay is defined by a precisely similarly worded
clause being Clause 12 of the Letters Patent granted to the High
Court of Bombay.
So also is the corresponding ordinary original civil jurisdiction
of the High Court of Madras : by clause 12 of the Letters Patent
granted to the High Court of Madras.
No other IJigh Courts in British India except only those of
Calcutta, Bombay and Madras, have any ordinary original oivil
jurisdiction. Accordingly a suit for infringement of a Patent cannot
be originally instituted in any High Court except in Caloutta or
Bombay or Madras.
It is possible however, when a suit for the infringement of a
Patent has been instituted in a District Court, if it is desired that
the suit should be heard in the High Court under whose supervision
** For an authority for reading the words “In ease leave of the Court shall
have been first obtained, in part” as governing suits for land as well as non-land
suits, see Ealaram Bhatkarji db Another v. Ramehandra Bhatkarji db Others (1898)
22. Bom. 922 at p. 925, Bachoo v. Nagindas (1914) 16. Bom. L. R. 263 at p. 269 and
40 Bom. 270, Qovindlal Bansilal v. Bamilal Molilal <£• Others (1922) 46 Bom. 249 ;
but see also Hatimhhai v. Framrox (1927) 51. Bom. 516.
»• (1905) 29. Mad. 239 and (1911) 15 C. W. N. 741 (P. C.)
Ch.xvn]
JURISDICTION WITH LEAVE
671
that District Court is situated, to have the suit transferred for hear-
ing to a Bench of that High Court instead of its being heard in the,
District Court. It may be that unusually complicated issues arise
in the suit, involving abstruse scientific questions of mechanical or
electrical engineering or of chemical research and entailing the
attendance from a distance of specialists and experts to give evidence
or it may be that the case raises various questions of law of unusual
occurrence. For one reason or another it may be found desirable in
the particular instance for the case to be disposed of by a High
Court.
This course was recently adopted by consent of the parties in the
suit of Ohanshayam Das Jagnani v. Ramnarayan Ganeshnarayan 40
which was originally instituted in the Court of the District Judge of
Patna but was taken up as an original suit under Clause 9 of the
Letters Patent of the Patna High Court and heard by a Bench con-
sisting of the Chief Justice the Hon'ble Sir Courtney Terrell and the
Hon’ble Mr. Justice Jwala Prosad in the High Court at Patna.
Leave to sue : under the Letters Patent (i.e. under Clause 12,
of the Letters Patent for the Calcutta, Bombay & Madras High
Courts respectively).
With regard to the institution of a suit for the infringement of a
Patent originally in any one of the High Courts of Calcutta, Bombay
or Madras, this may be done, as already indicated in any case where
the Defendant at the time of the institution of the suit resides
(dwells) within the jurisdiction of that Court : or in any case where
the Defendant carries on business within that jurisdiction : or in any
case where the whole of the cause of action has arisen within that
jurisdiction. In addition to this a suit for the infringement of a
Patent may be instituted in any one of those three High Courts if a
part of the cause of action has arisen within the jurisdiction of the
Court in question, provided the leave of the Court shall have been
obtained to file the Plaint in the Court in question.
In cases where the Defendant does not reside or carry on busi-
ness within the local limits and where it cannot be safely said that
the whole cause of action has arisen within the local limits, it is
therefore advisable that the Plaint should be filed with the leave of
4 * Unreported case being Title Suit No. 1 of 1931 in the High Court of
Patna ; though reported on appeal to the Privy Council in (1936) 33. R. P. 0. 160.
873 THE LAW OP PATENTS IN INDIA [Ch. XVII
the Court obtained under Clause 12 of the Letters Patent which has
„been given above.
Questions will often arise whether particular events which may
have taken place within the jurisdiction can be held to be “a part of
the cause of action” so as to afford grounds for obtaining leave under
the clause (already referred to) of the Letters Patent of the particular
High Court in question.
In regard to the Calcutta High Court, the position, it is sub-
mitted, is this : —
The Patent Office for British India being situated in Calcutta
within the local limits, it would seem that in every case of infringe-
ment, unless in a very exceptional case, some part of the Plaintiff’s
cause of action will inevitably arise within the local limits of the
Calcutta High Court. As the Plaintiff in order to establish his right
to sue has to show that he is the “Patentee” — and to do this has
to show that he is the registered proprietor of the Patent sued upon
— registered, that is to say, on the Register of Patents kept at the
Patent Office in Calcutta — it would seem that he cannot succeed
without establishing the fact of such registration. It is submitted then
that this fact, the registration, is "a part of his cause of action” within
the meaning of the Clause of the Letters Patent. If this is so, then
as in every suit for the infringement of a Patent such registration
must inevitably have taken place within the jurisdiction of the
Calcutta High Court, it follows, it is submitted, provided leave under
Clause 12 of the Letters Patent is obtained, the Plaintiff will in
every such case, be able to bring his suit in the Calcutta High Court
if he so desires.
In regard to the othor two High Courts of Bombay or Madras
also, if any part of the cause of action has arisen in either of those
Courts, the Plaintiff will in every such case, with leave, be able to
bring his suit in either of those Courts if he so desires.
Assignment within the jurisdiction.
On the same principles as those on which it has been held that
the mere assignment alone of a debt or the endorsement alone of a
negotiable instrument is a part of a Plaintiff’s cause of action
sufficient to be the basis of a grant of leave to sue under the clause
referred to of the Letters Patent, it is submitted that the assignment
alone within the jurisdiction of a Letters Patent constitutes a part of
Ch. xvn]
LEAVE MAY BE REVOKED
673
the cause of action affording grounds to the Plaintiff to ask for, and
power to the Court to grant, leave to sue ; so that there will be good
jurisdiction if a suit is instituted with leave in one of the three
High Courts mentioned, in a case where the assignment only of a
Patent and no more takes plaoc within tho jurisdiction in
question. 41
Formal grant of leave in the first place not final : but may in
certain circumstances be revoked.
In several recent cases in the Calcutta High Court where
leave under Clause 12 of the Letters Patent of that Court has been
granted by a judge at the time the Plaint has been filed, the grant of
such leave has subsequently been revoked when the Defendant has
appeared and made an application for its revocation.
The point must be borne in mind therefore by a Plaintiff and
his advisers that the formal leave to sue whioh may be obtained in
the first instance as a matter of course, may not necessarily be final
and conclusive ; and that there may be a risk, in a case where the
part of the cause of action relied on as arising within the jurisdic-
tion is very small and where there may be reasons of inconvenience
or hardship against the Plaintiffs choice of forum, that the
jurisdiction of that Court may still at a later stage be denied to him.
It is true that the consequent period of uncertainty between
the date of filing the Plaint and the date of any application for the
revocation of the leave may entail a loss of time and money to the
Plaintiff, which he would have been saved if no formal leave had
ever been granted to him by the Court, but under the present system
as pointed out by Panckridgc J. in the recent case of Kalooram
Agarwalla v. Jonistha Lai Chuckroberty <& Am . 4 * it appears to be
impossible to avoid this. In that case the learned judge said : —
“Various arguments have been advanced by the learned
Standing Counsel on behalf of the Plaintiff. He points out that
under the Civil Procedure Code a suit can be instituted in any Court
within whose jurisdiction any part of the cause of action arose, and
41 See Hwmathrai Binjraj v. Churamoni Shah and Ors (1933) 37. C. W. N.
1139 (as to leave after assignment within the jurisdiction of a debt) ; but sec the
further comments and cases cited below.
(1936)40. C. W. N. 161 at p. 162.
85
43
674
THE LAW OF PATENTS IN INDIA
[Ch. XVII
that there is no question of the granting or refusal of leave. This is
tme, but I do not think that the fact that in a Mofussil Court
there is no way of preventing unnecessary hardship in a case like
this is a reason for allowing the discretionary jurisdiction of this
Court to be used to infliot a similar hardship.
Next it is said that the leave having in fact been granted it
must be assumed that the learned judge granting it has exercised his
discretion, and that I cannot or ought not to interfere with such
exercise.
With regard to this the difficulty is that my mind refuses to
make an assumption which I know is contrary to facts. I believe,
that the practice of all Judges dealing with interlocutory matters on
the Original Side is the same. The Master examines the plaint and
if there is an allegation in it showing that a part of the cause of
action arises within the jurisdiction, the Master endorses the plaint
“Leave granted under Clause 12” and submits it to the Judge for
his signature. The Judge then signs the plaint as a matter of course
and leaves it to the Defendant to take such steps as he may be
advised. This system may not be wholly satisfactory, but it is not
easy to think of a better one, because at that stage whatever is done
must in the nature of things be done ex parte. I therefore feel no
difficulty in reviewing (I use the term in its popular sense) the
decision, if it can be called a decision of Remfry J., in signing the
endorsement of the Master and granting leave.”
The result is that the formal leave which is granted by a Judge
at the time of filing the Plaint on the exparte application of the
Plaintiff, should be regarded in truth as having the limited effect of a
provisional grant only : subject to revocation thereafter in certain
circumstances on application by the Defendant.
Cases where formal leave has been provisionally granted in the
first place but where it is afterwards shown that no part at
all of the eause of action arose within the jurisdiction.
The foregoing remarks apply only to cases in which it is possi-
ble to show that some part, however small, of the cause of action
arose within the jurisdiction. In other cases where it is shown that
in fact no part of the cause of aotion arose within the jurisdiction,
the position is different. In these oases the position is that the Court
Ch. XVII] GROUNDS FOR REVOCATION OF LEAVE 675
•
never had jurisdiction to entertain the suit even with leave. It is
not then so much a question whether there should or should not be
revocation of the leave granted, since this question is immaterial, but
a question simply of showing that the Court has not and oannot give
itself jurisdiction. In these oases therefore it will be immaterial for
purposes of jurisdiction whether the Defendant has applied to have
the Plaint taken off the file or the leave revoked at the earliest
possible moment or not : that is to say immaterial whether the
Defendant has made any interlocutory application in the matter by
way of objection to the jurisdiction or whether he has simply waited
until the hearing of the suit to make his objection. For in any event
in these cases the Court will at no point of time have the requisite
jurisdiction to entertain the suit : and any order or deoree purported
to be made by it for reliefs in the suit will be a nullity.
Fresh leave may be necessary on amendment.
Since the leave under Clause 12 is the very foundation of the
jurisdiction of the Court to entertain the suit, suoh leave must be
obtained before filing the Plaint. If further parties or further causes
of action necessitating leave are added, fresh leave is absolutely
necessary. 43
As to to the principles and grounds on which in practice leave to
sue may be refused ; or, when previously granted, revoked.
In the very great majority of cases once leave to sue has been
granted, even though ex parte, the Court does not afterwards revoke
the grant of such leave. There has been some difference of opinion
in the recently decided cases of the Calcutta High Court as to the
prinoipleB or grounds on which such leave should bo refused to be
granted or if granted revoked. The cases have mostly arisen in cir-
cumstances, where the Plaintiff* has relied, for the part of his cause of
action giving jurisdiction, on an assignment of a negotiable instru-
ment within the jurisdiction, and no other part of the cause of action
has arisen within the jurisdiction.
In Hamathrai Binjraj v. Churamtoni Shah <& Ors .** Ameer Ali
J. held : —
“The argument in support of the application may be summarised
as follows. That under Clause 12 of the Letters Patent the Court
«• See Mufti's Civil Procedure Code (10th edition) p. 1343.
(1833) 37. C. W. N. 1139 at p. 1140.
44
676
THE LAW OF PATENTS IN INDIA
[Ch. XVII
has discretion to grant or refuse leave in a oase where part of the
cause of action arises in Calcutta, and reference is made to the case
of Seshagiri Bow v. Oskur Jung * 6 In that oase, although it was not
necessary for the decision of the Madras High Court, since it did not
appear that any part of the oause of action had arisen in Madras, it
was held that the question of convenience and prejudice was a matter
which could and ought to be considered in granting or refusing
leave.
As regards the facts, it is suggested (and not without some
reason) that this assignment was made not only in anticipation of
the insolvency of the assignor firm which was imminent and has,
I understand, supervened, but for the purposes of creating jurisdic-
tion in Calcutta so as to put pressure on the Defendant firm by
compelling the latter to contest the suit in Calcutta where they have
no business house or connection. The latter point seems to me the
more relevant to the application.
The first aspect of the matter is purely a matter, in my opinion,
which must be gone into in the suit, and it is not possible for me in
granting or refusing leave to investigate matters which must be
and can only be investigated on evidence, although there may be
grounds of suspicion.
The second aspect of the matter is one which appeals to me far
more, especially having regard to the fact that I have either at the
Bar or on the Bench, come across cases where assignments have been
made away from the scene of action in order to (obtain) an advantage
over the matter.
It has always been assumed, however, that in a suit by an
assignee the assignment is a part of the cause of action, and upon
that cause of action leave, as far as I know, has invariably been
granted. For practical purposes it is impossible before the hearing
of the suit to decide whether an assignment is or is not bona
fide. I do not think that the Court would be justified, on a mere
suspicion that the assignor might not have acted in the ordinary
way of business, in depriving the Plaintiff of the right to bring a
suit in the plaoe where the assignment was made, which right has
always been recognised by this Court.
45
(1907) 30. Mad. 438.
cb. xvn]
IN OASES OF ASSIGNMENT
677
It might have been more satisfactory if the rule were otherwise.
i.e., that an assignee in taking an assignment of a debt should take
such assignment with only such right of suing as the assignor had,
and could sue where the assignor could sue and nowhere else. I do
see difficulties in the present system under which an assignor can
create jurisdiction in any place where the Civil Procedure Code
applies, but I do not think it would be right for me to attempt to
change it.”
On the other hand in Ralooram Aganoalla v. Jonistha Lai
Chuckroberty <& Anr . 48 Panckridge J. revoked the leave to Bue
which had been granted stating his view of the matter as follows : —
“In my opinion, on the facts as set out in the plaint, leave
ought not to have been granted. The sum at stake is not a large
one, nor priraa facie is there likely to be raised any issue which the
tribunal within whose local jurisdiction the Defendants reside
is not competent to try satisfactorily. The assignment was ad-
mittedly executed on the last day before the expiry of the period
of limitation and one cannot help feeling a suspicion that it was
collusive in the sense that it was executed mainly for the purpose of
giving this Court jurisdiction which it would not otherwise possess.
The Defendants are described in the plaint as landholders residing
in the District of Manbhum, and in my opinion it is no hardship on
a person who sees fit voluntarily to take such an assignment as the
present to be compelled to institute any proceedings which may be
necessary to realise his debt in the Courts, which would have juris-
diction, apart from the assignment. On the merits I think that the
case is not one on which leave should have been granted.”
It was on these grounds that in that case the learned judge
made an order for revocation of the leave.
Then in Daulatram Rawatmull v. Maharajlal &■ Ors .* 7 Panck-
ridge J. made the following observations bearing on the question of
the grounds on which leave should be refused or, if granted, revoked :
“I should not feel justified on the materials before mo in
holding as I did in the former case, that the assignment is prima
facie collusive, in the sense that the circumstances indicate that it
was effected in Calcutta largely for the purpose of giving juris-
44 1936 40. C. W. N. 161 at p. 162.
4 » 1936 40. C. W. N. 164 at p. 165.
678
THE LAW OF PATENTS IN INDIA
[Ch. XVU
diction to this Court and thereby embarassing the defence. At the
same time, I am of opinion that usually it is not right to grant leave
in a case where the part of the oause of action on which the juris-
diction depends is a matter with which the Defendants have had
nothing to do. I do not lay this down, by any means, as a hard and
fast rule,, but generally speaking, it appears to me that when people
take an assignment of a promissory note they should be prepared to
enforce their olaim either in the Court within whose jurisdiction the
makers reside or in a jurisdiction where a part of the cause of aotion
with which the makers are directly concerned has arisen.
The branch of the argument advanced by Mr. Bose which has
attracted me most is his submission that if people choose to execute
a negotiable instrument, they must be held to contemplate the possi-
bility of its passing from hand to hand by endorsement and delivery
and of its eventually getting, in the ordinary course of affairs, into
the hands of some one who may elect to institute proceedings in a
Court which does not suit the convenience of the makers of the note.
Were the Defendants in this case a mercantile 6rm, I am not sure
that this argument would not have turned the scale in favour of
the Plaintiffs, but they are described as land-owners and it appears
from the plaint that the consideration for the note took the form of
advances of cash and the supply of goods for personal consumption.
In these circumstances the argument as to negotiability does not
apply with the same force as it would in the oase of parties engaged
in mercantile transactions ”
\
In Harnathrai Binjraj v. Sew Prosad Sing and others and in
Mahadeo Lai Nathmull v. Rani Sonabati Kumari 48 Panckridge J
taking into aocount the fact that there would be no hardship to the
Defendant if the case proceeded in the Calcutta High Court refused
to revoke the leave.
In Rai Radhika Mohan Roy Bahadur v. Bhobani Prosanna
Lahiri & Others.** Cunliffe J. in an observation during argument
observed : — “I am beginning to think that when a holder for value
brings a suit the entire oause of action is the assignment and as such
no leave of the Court is necessary.” In the oourse of his judgment
in that case the learned judge observed : —
«• (1936) 40. C. W. N. 166 at p. 166. and (1936) 40. C. W. N. 719 (note).
4 » (1936) 40. 0. W. N. 717.
Ch. XVII]
CASES
679
"It is for me now to make up my mind as to whether the facts
in this case are in the same category as those with which my learned
brother was dealing, and to decide also whether I can agree with his
view of the law with regard to the principle involved.
I am not at all convinced that on the facts before me, scanty
as they are, this assignment, admittedly for value, was brought about
simply for the purpose of embarrassing the Defendants and for
the purpose of bringing the case within the jurisdiction of the
Original Side of this High Court, although, no doubt, the question
of convenience was considered by the persons who eventually
decided upon buying and parting with the note. Nor am I satis-
fied that there was hardship upon the Defendants, more especially
because the note was executed quite close to Calcutta, aB I
have already pointed out, and therefore there would not be this
question of difficulty of bringing witnesses up to give evidence
here if they wished so to do as there appears to have been in the
oase before my learned brother. Holding this view therefore on the
facts, it seems necessary for me to say very little about the view
of the law expressed by my learned brother. I can only say this
that I have the misfortune to differ from what appears to have
been the general trend of his observations with regard to his
treatment of the holders or assignees of negotiable instruments
who are suing in this Court under the jurisdiction dealt with
in Clause 12. It seems to me that if you are going to discriminate
between Plaintiffs and Defendants who are interested in negotiable
instruments on the grounds of hardship or humanity, or even on
the ground of legitimate collusion to assign, you are striking
at the whole root of the law of negotiability as laid down not
Only in the Negotiable Instruments Act but in the time-honoured
principles of the Law Merchant.
I am not satisfied in my own mind that because a person
happens to be a private individual and the holder of, let us say, a
simple bill of exohangc, he should be treated on a different footing
in law to a commercial man through whose hands instruments
of negotiability are daily passing.”
The learned Judge accordingly refused to accede to the applica-
tion of the Defendant for revocation of the leave to sue.
There would appear therefore to be some doubt whether what
is referred to by Cunliffe J. as “legitimate collusion” in relation to the
080
THE LAW OF PATENTS IN INDIA
[Ch. XVII
making of an assignment in the oase of a negotiable instrument, will
be held to afford a good ground for revocation of leave or not. It
would seem however to result from these oases that in the oase of a
Patent, since this is not a negotiable instrument, if the only part of
the cause of action relied on as having taken place within the
jurisdiction is the assignment of the Patent and if it were to be
shown that the assignment had been made simply to create jurisdic-
tion, there would be some risk, at least, of the leave to sue if granted
being revoked on objection being taken by the Defendant.
All that can definitely be said is that the confirmation or
revocation of leave in such oases is a matter in the discretion of the
Judge in each individual case.
The advisability must also be borne in mind by the Defendant
and his advisers, should they desire to question the propriety of the
grant of the leave to sue in the particular High Court chosen by the
Plaintiff, of making any application for revocation of the leave at
the earliest possible moment. For if this is not done, it is more than
likely that on account of the delay alone, the Court will reject any
application by the Defendant to have the grant of leave revoked.
The following observations made recently in the Calcutta High
Court in different cases may be referred to. In Kalooram Agarwalla
v. Jonistha Lai Chukroberty and Anr b0 Panckridge J. said on this
point (after considering the two previous cases of the Secretary of
State for India in Council v. Qolabrai Paliram bi and Harnathrai
Binjraj v. Churomoni Shah 82 : —
“I do not think that either of these cases can be taken as an
authority for the proposition that the proper course for the Defen-
dant to take in a case where he maintains that the discretion of the
Court has been wrongly exercised is to abstain from making any
application to remove the suit from the file and wait until the
hearing to make his submissions. On the contrary, I think in many
cases the Defendant should bring this aspect of the matter to the
notice of the Court at the first possible moment, and that his failure
to do so, if it in any way prejudices the position of the Plaintiff, is
a. matter which may prevent sucoess of his application.”
(1936) 40. 0. W. N. 161 at p. 163.
• (1931) 59. Cal. 150 or 35, O. W. N. 930.
. " (1933) 37. C. W. N. 1139.
Ch. XVII] PRACTICE AS TO OBTAINING LEAVE TO SUE
G81
And in Harnathrai Binjraj v. Sew Prosad Singh 53 Panokridge
J. also observed : — “This is a border line case If the suit had
not reached the stage which it has in fact reached I should probably
have considered that the circumstances justified me in revoking the
leave In this case on the other hand not only has there been
discovery but the suit has appeared in the Prospective List and also
in the Warning List on several occasions. It appeared on the
Warning List on the 18th July 1935, and on the 22nd August 1935
and on those occasions it was adjourned by consent, the adjournment
on the last occasion being over the long vacation. It is said that
the Defendants consented to the adjournment to accomodate the
Plaintiffs and that it is, therefore, inequitable, that they should be
in a worse position because they have treated their opponents
with courtesy. I think there is something in that argument but
at the same time where the Defendant feels aggrieved at the
manner in which the Court has exercised the discretion which it
admittedly has, I think that he should apply at the earliest moment
and not allow what is prima facie a perfectly bonafide suit to proceed
through the normal stages of litigation up to the stage of being
ready for hearing and appearing in the Warning List before he
makes his application. In these circumstances I refuse the applica-
tion with costs.” Cunliffe J. also in Rai Radhika Mohan Roy Br .
v. Bhobani Prosana Lahiri <& Ors. in which case several prelimin-
ary steps had been taken in the form of the issue of a commission
for the examination of a witness and applications for adjournments
before the application by the Defendant for revocation of leave to
sue was made, refused to revoke the leave granted. 54
Practice.
The present practice of the Calcutta High Court for the obtain-
ing of such leave is that such leave is asked for from the Master at
the time of presentation of the Plaint for filing. The Master either
grants or refuses the leave subject to the papers being signed by the
Judge who is taking interlocutory matters. Thereafter, probably on
the same or the next day, the Plaint with an endorsement of leave
having been granted is put before the judge by the Master for signa-
ture : no one on behalf of the Plaintiff being required to make any
~ •• (1936) 40. C. W. N. 165.
(1936) 40. C. W. N. 717.
86
04
THE LAW QE P4TH^TS IN I1JWA [ft, XYW
personal application (p thp Judge either in Chambers or otherwise.
The necessary leave is then granted by the Judge signing (he
endorsement op the Plaint tp (he effect (hat it has beep granted.
Should the Master indicate hie refnwi tn grant the leqye, then
an application may, if desired, be mpde to the Jttdgfi in Chambers
praying for the leave to be granted : this being done as an ex parte
Chamber application.
4a tp appeal
If the Plaintiff applies to the Judge for leave under Clause 19
and such leave is refused, he may appeal from suoh refusal as being
a judgment within Clause 15 of the Letters Patent which expressly
gives a right of appeal in every case from a “judgement” of a single
judge of the High Court.
It is only by way of appeal from the order that the order of
one judge refusing leave under clause 12 can be superseded. 65
If leave is granted, no appeal will be open to the Defendant
from the order granting it, since such order does not constitute a
‘-judgment” under clause 15 of the Charter and is not otherwise
appealable. 66 The Defendant has however other remedies which may
uow be considered.
Defendant’s remedies where leave wrongly granted.
The Defendant may apply to have the ex parte order granting
the Plaintiff leave set aside ; making a separate application for this
purpose. But if questions of difficulty are involved he may in
some cases wai^until the hearing and raise an issue at the hearing
of the suit ; for the questions involved may be dependent on the
evidence in the suit and on the decision of matters to be decided
in the suit ; and may not be able to be properly dealt with on 00
application to revoke leave which wiU have tp be decided merely
on affidavit. 67
*» Bee Be Souna and Anr, v. G>|w. (1867) 3, M-H.C. 384.
•* As to the principles sought to hay? been laid down as to what docs nut
constitute a “judgment” within Clause 15 of the Letters Patent so that an appeal
will lie from it see Mulla’s Civil Proqedure Code (10th Edn.) p. 1349 ; Buies of
Calcutta High Court (3rd Edo) p. 94 to 97.
■'* See Secretary of State v. Qolabrai Puliram (1932) 59. Gal. ISO ) Keuaieji
Bomodar Jairam y. Luckmidas Lajha and An r, (1883) 1$. £o«k. 404 ; Nagamoni
Mudaliar v. Janahiram Mudaliar (1895) 18. Mad. 142 ; Mafiome d Hyi Batjtfid v.
Jute and Qunny Brokers Ltd. (1931) 33. Bom. L. R. 1364
AS I'd APPEAL
dh.*Vii]
683
Appeal.
If the Defendant adopts the former course and the decision of
bis application to have the order granting leaVe set aside is adverse
to him, he taay appeal from that decision. 5 ’
Waiver
It has been held that where the Plaintiff seeks to base the
the jurisdiction of the Court on the ground that the whole cause of
action has arisen within the jurisdiction, if it is thereafter found that
in fact his whole cause of action did not so arise, then it is immaterial
whether the Defendant has taken any step in the suit or done any-
thing Which might be called a waiver of his objection for want of
jurisdiction ; the ground of the decision being that the defendant
cannot be bound by the doctrine of estoppel and presumably that
no act of the parties such as waiver can confer on the Court a juris-
diction which it has not got. This was the effect of the decision in
Shama Kanto Chatterjee v. Kusiith .** This decision is completely
understandable : in fact it is difficult to imagine a Court arriving
at any different decision.
In cases when the Plaintiff bases the jurisdiction of the Court
on the ground of part of his cause of action having arisen within the
jurisdiction completed with his having obtained leave under Clause
12, there have however been conflicting decisions.
For present purposes it is enough to note that the Calcutta
High Court takes one view : viz. that the defendant may be held to'
have waived his objection to the want of jurisdiction so that the
result is that the Court may proceed with the hearing of the suit :
while the Bombay High Court takes the diametrically opposite
view : viz. that in such a case no waiver by the Defendant can
confer jurisdiction on the Court. 60
•• See Vaghoji Kuverji v. Cotnaji Bomanji (1905) 29. Bonn 249 ; Hadjee
Ismail Hadjee Hubbeeb v. Hadjee Mahomed Hadjee Joosub. (1874). 13. Ileng
h. R. 91.
»“ (1917) 44.Cal.10.
*' For ffie virious conflicting decisions oni the point reference may be
made to fttfBa’t Civil ftOtedOrt Code (10th Edn.) pp. 5 4od 125.
684 THE LAW OF PATENTS IN INDIA [Ch. XVII
Importance of the Local limits of the respective High Courts of
Calcutta, Madras and Bombay.
In regard to suits for infringement of Patent sought to be
instituted in one or other of the three High CourtB of Calcutta,
Madras or Bombay in the first instance in the original jurisdiction of
that Court, such jurisdiction can only be invoked as already indicated,
in circumstances when some material factor (whether the factor
relied on be the dwelling or the carrying on business of the
Defendant, or the whole cause of action, or some part of the cause of
action) has existed or occurred within the local limits of the
particular High Court in which the suit is sought to be instituted.
It is of interest therefore to note what are the local limits of the
ordinary original civil jurisdiction of each of those High Courts
respectively.
Local limits of the Calcutta High Court.
The local limits of the ordinary original civil jurisdiction of
the Calcutta High Court today stand as they were declared and
prescribed in the Calcutta High Court (Jurisdiction Limits) Act
being Act XV of 1919 passed by the Indian Legislature. The act
itself, which is short, and the Schedule thereto in which the
boundaries are prescribed in detail are set out for convenience of
reference in Appendix No. 5 of the present work. The boundaries
there mentioned may be perused and noted as necessary when
considering whether the Calcutta High Court has jurisdiction in any
given case.
For the earlier history of previous boundaries and for the
alterations in the boundaries which were previously made before the
present boundaries were prescribed by the Act of 1919, reference
may be made to the rules of the Calcutta High Court (3rd edition
1930) at Appendix U from page 631. 81
It may be noted that under Clause 11 of the Charter for the
Calcutta High Court of 1865 it was also provided as follows : —
“11. And we do hereby ordain, that the said High Court of
Judicature at Fort William in Bengal shall have and
See also Calcutta High Court Bulee (3rd Edition 1930) p. 86 & 87.
Ch. XVII] JURISDICTIONAL LIMITS OF THE HIGH COURTS
exercise ordinary original civil jurisdiction within such
local limits as may from time to time be declared and
prescribed by any law made by competent legislative
authority for India, and until some local limits shall be so
declared and prescribed, within the limits declared and
prescribed by the proclamation fixing the limits of Calcutta
issued by the Governor-General in Council on the Tenth
day of September in the year of Our Lord One thousand
seven hundred and ninetyfour, and the ordinary original
civil jurisdiction of the said High Court shall not extend
beyond the limits for the time being declared and prescribed
as the local limits of such jurisdiction.”
It is thus clear that the Indian Legislature has ample power to
extend the local limits of the ordinary original civil jurisdiction
of the High Court of Calcutta . 62
“* The position today is highly anomalous. The question whether a liti-
gant has the right to file his suit in the Calcutta High Court or whether
he is compelled to resort to the protection of other Courts in the mofussil
with totally different mofussil procedure, as at Alipore or elsewhere,
may depend on such illogical absurdities as whether the Defendant lives on
one side of Lower Circular Road or the other. It will be found that
Lansdowne Road, Lower Rawdon Street, Elgin Road, Lee Road and such
places are all in the mofussil. So is the French Motor Car Co.’s office.
The petrol station on one side of the road is in the town of Calcutta,
while that on the other is in the mofussil. The Bishop’s College is in the
mofussil, while the Martiniere School is in Calcutta. It will be found that
Entally is mostly, though perhaps not all, outside Calcutta. Also the whole of
the new area adjoining the Lakes, though created and administered by the
Calcutta Improvement Trust, is similarly outside Calcutta. It is to be conceded
that a boundary line must be placed somewhere and that at one point or another
will fall the division : but it is submitted that under present conditions and in
view of the great expansion of Calcutta within recent years, to place the so-
called limits of the town of Calcutta where they are now placed is absurd.
The inconveniences of the present demarcation are considerable and will
become greater as the shifting of important houses and buildings in Calcutta
from the Northern quarter southwards increases. Some of the very real
differences which affect any prospective Plaintiff are these : if he has to file his
suit in the Alipore Courts he will be compelled to pay a very large ad valorem
duty on filing his suit. He may by circumstances be compelled to file a
suit in order to protect his rights but unless the opponent is a man of means he
will be inevitably out of pocket to the extent of the whole of the large initial
expenses of filing the suit ; and this will be so whether the suit is ever heard or
[ch. xrtt
686 THE LAW OF PATENTS IN INDIA
Local limits of titf Madras High Court.
The local limits of the ordinary original civil jurisdiction of the
Madras High Court are those prescribed in the Madras High Court
(Jurisdictional Limits) Act, being Act IV of 1927 passed by the
Madras Legislature. The Act and the Schedule thereto in which the
boundaries are prescribed in detail are set out for convenience of
reference in Appendix No 5.
The boundaries there mentioned may be perused and noted as
necessary when considering whether the Madras High Couit has
jurisdiction in any given case.
Local limits of the Bombay High Court.
In regard to the local limits of the Bombay High Court, it
appears that no limits have been fixed by any Act. In practice*
owing to Bombay being an island, it would seem that the need for
the fixation of the limits is not so insistent as in the cases of Calcutta
and Madras. The Bombay High Court has however by a Buie
of that High Court prescribed the extent of the limits of the area
over which the Sheriff of Bombay is to exeoute process. That is by
Buie 391 of Chapter XXV, Part II of the Rules and Forms of the
Bombay High Court, Original Side, 1936, which is to the following
effect : —
“The Sheriff Bhall ordinarily execute the process of the High
Cotirt in the Island of Bombay, Cross alias Gibbet and Butcher’s
Islands And th§ coasts And harbours thereof, respectively, and
shall not be compellable to exeoute process beyond the said limits.”
not. In the High Court he need pay no ad valorem duty on filing the suit, hut
fees are incurred chiefly if and when the suit is heard and in proportion to the
time taken in its hearing. ThuB if the suit is not contested or is settled, the
expense will not be great. Besides this the Plaintiff will be unable to have the
advantage in the mofussil court of the procedure available in the High Court for
suits marked as Commercial Causes : and the consequent delay, and probably the
final expense, after many adjournments, may be a very big disadvantage. It ft
submitted that a short bill on lines similar to the Act of 1919 but prescribing
different boundaries ft required to be introduced and passed at the earliest
Opportunity effecting the Oeceisary extension. And that the fact that Govern-
ment may consider that it drears a bigger revenue from Court fees under the
present anomalous and inequitable arrangement of eonrt boundaries ft no reason
why the citizens and tax-papers of Calcutta proper sbotrld be denied recourse
in necessary litigation to their own High court.
Qki *YU] JUDICIAL DIVISIONS OF BBITISp INDIA
District Courts, Method of division of British Indio for tbo
administration of Justice.
British India is divided for purposes of the administration of
Oivil justice into areas under the superintendence of certain High
Courts* a certain Chief Court and oertain Courts of Judicial Commis-
sioners. These divisions correspond in most instances but not alto-
gether with the Provinces and other administrative areas into which
British India has been divided also for the purposes of executive
government. The areas under the superintendence of the High
Courts, the Chief Court and the Courts of Judioial Commissioners
mentioned are sub-divided for the purposes of the administration of
oivil justice into Districts, each of which has a District Court. These
judicial Districts which comprise in each instanoe the area of the
jurisdiction of each District Court, by no means always correspond
with the revenue Districts into which British India is divided for
purposes of collection of revenue and exeoutive administration.
It is to these District Courts that the jurisdiction of hearing
and deciding suits for the infringement of Patents is given under
Seotion 39 of the Indian Patents & Designs Act of 1911.
Today; since the passing of the Government of India Act of
1935 whereby, among the other provisions made for the alteration
of the constitution of India, provision was made that Burma and
Aden should cease to be part of India ; M the position in regard to
the division of British India proper for the purposes of the
administration of civil justice would appear to be that there will
be 7 High Courts, 1 Chief Court, and 5 Courts of Judioial Com-
missioners* 4 . In the several areas demarcated for the superin-
tendence of those superior oourts there are several scores of
District Courts spread over the whole territory of British India.
It may be convenient to record here a list of the various
superior oourts consisting of High Courts, Chief Courts and Courts
of Judioial Commissioners existing in British India, since it is round
these units, as already explained, for purposes of practical Buperin-
•* 26 Geo. 5 Ch. 2. Section 46(2) and Section 94(2).
•* Under Section 319 of the Government of India Act of 1935 it is provid-
ed substantially that those courts mentioned "shall in relation to British India
be deemed to be High Courts for the purposes of this Act"
688 THE LAW OP PATENTS IN INDIA [Ch. XVII
tendence and administration, that the District Courts throughout
British India are grouped.
High Courts : —
(i) Calcutta (created by Letters Patent dated 28th December
1865). Having superintendence over all District
Courts in the Presidency of Bengal and in the
province of Assam. 65
(ii) Madras (created by Letters Patent dated 28th December
1865). Having superintendence over all District
Courts in the Presidency of Madras. 66
(iii) Bombay (created by Letters Patent dated 28th December
1865). Having superintendence over all District
Courts in the Presidency of Bombay. 67
(iv) Allahabad (created by Letters Patent dated 17th
March 1866) 66 Having superintendence over all
District Courts in that part of the province known
as the United Provinces which comprises the old
province of Agra.
(v) Patna (created by Letters Patent dated 9th February
1916). 69 Having superintendence over all District
Courts in what is now the province of Bihar ; also, at
present those in the new province of Orissa.
(vi) Lahore (created by Letters Patent dated 9th February
1919). Having superintendence over all District
Gourts in the Province of the Punjab. 70
(vii) Nagpur (created by Letters Patent dated 2nd January
1936). Having superintendence over all District
Courts in the province known as the Central Provin-
ces (& Bcrar). 71
*• See Calcutta High Court Rules (3rd. edn : 1930) p. 78.
•• See Civil Court Manual (5th edn : 1936) p. 2210.
•» Ibid.
08 For convenient reference to which, see the Civil Court Manual (5th
Edo : 1936) p. 2199.
•• Ibid p.2234.
*« Ibid p.2246.
11 Ibid p. 2198a. This High Court is not mentioned by name in Section
219 of the Government of India Act of 1936 but is included within the general
descriptive words of that section.
Ch. XVII]
SUPERIOR COURTS
Chief Courts : —
There is now only one Chief Court in British India, being
the Chief Court of Oudh at Lucknow : having superintendence
over all District Courts in that part of the province now known
as the United Provinces which comprises the old province of
Oudh.
Courts of Judicial Commissioners : —
(i) Sind.
(ii) North-West Frontier Province.
(iii) Coorg.
(iv) Ajmer-Merwara.
(v) Delhi . 72
Additional territories : —
Besides those parts of British India which are for purposes of
judicial administration under the superintendence of those suporior
courts above-mentioned, there are certain additional areas making
up the full territory of British India which do not appear for pur-
poses of civil judicial administration to fall directly under the
control or supervision of any superior civil court such as a High
Court or a Chief Court or a Court of a Judicial Commissioner.
These are : —
(i) British Baluchistan.
(ii) The Andaman & Nicobar Islands.
(iii) Panth Piploda . 73 _
’ 9 None of the above-mentioned Courts except only the H igh Courts of the
three Presidencies of Bengal, Madras & Bombay hare any ordinary original civil
jurisdiction. Consequently there is no jurisdiction which allows any suit for the
infringement of a Patent to be filed in the first instance in any of those Courts
except in the three Presidency High Courts. The complete list of these superior
courts (which function primarily as Appellate Courts) is given here merely for
general interest and because for purposes of administration each of these superior
courts forms the nucleus round which a number of the District Courts presently
to be considered are grouped.
’ * Panth Piploda, a Thak'urat in the Malwar Agency, is peculiar among the
minor holdings of that Agency, being held directly from the British Government
without the intervention of any Indian State. See the Imperial Gazetteer of
Indian (1903 edn.) Vol. XVII p. 98 and Vol. XIX p. 405. It is in these circum-
stances that it has been designated a Chief Commissioner’s Province for purposes
of executive government under the Govt of India Act of 1935 : Sec. 94,
87
THE LAW OF PATENTS" IN INDIA
[CfeXVI*
District Courts throughout British India.
The- following are the- District Courts in British India. Each
oneof these; provided the particular court has jurisdiction in the*
particular case, has power to entertain, hear, and decide a suit for
th\e infr i ngement of a Patent.
DISTRICT COURTS UNDER THE CALCUTTA HIGH COURT
IN THE TERRITORY COMPRISING THE PRESIDENCY
OF BENGAL AND THE PROVINCE OF ASSAM:—
N. B. Though the territory of the province of Assam is a
separate Governor’s Province for the purposes of executive adminis-
tration, there is no High Court, or Chief Court or Court of a Judicial
Commissioner for Assam. Under present arrangements the District
Courts throughout the province of Assam are administered under the
superintendence of the Calcutta High Court. 1 *
In Bengal : —
Location and name of District Courts.
(In the Burdtcan Division)
1. BURDWAN 4. MIDNAPORE
2. BIRBHUM 5. HOOGHLY (includes
3. BANKURA the area of Howrah)
(In the Presidency Division)
6. 24 PARG A NAS (includes 8. MURSHIDABAD
the areas of Alipore and 9; J ESSO RE
Sealdah) 10. KHULNA
7. NADIA
[In the Dacca Division )
11. DACCA 13. FARID PUR
12. MYMENSINGH 14. BAKARGANJ
(In the Rajshahi Division )
15. RAJSHAHI & MALDA 17. RANGPUR
16. DINAJPUR- 18. PA BN A & BOGRA
JALPAIGURI AND
DARJEELING
Then hat* for some time ben aeoosidenbk body nf rrpininn in ftn— i in
favour of the cnestkm of a sepozate High. Court os Chief Court lor Asmsb. The
chief difficulty against tin scheme is lack of fiaaeee;
•Oh. xmi]
DIBfERIOT ; COURTS
<»i
(Tn the '' Chittagong Division)
19. TIPPERA (COMILLA)
20. NOAKHALI
In Assam : —
Location and 'name of
’District Courts : —
1. ASSAM VALLEY DIS-
TRICT COURT.
(at Gatihati and on circuit)
2. SURMA VALLEY DIS-
TRICT COURT.
(at Sylhet). 78
21. CHITTAGONG
Having jurisdiction over the
Revenue Districts of >—
1. Darrang ; Goalpara ; Kamrup ;
Lakhimpur ; Nowgong and
Sibsagar.
2. Sylhet and Cachar.
DISTRICT COURTS UNDER THE BOMBAY HIGH GOJJR1
IN THE TERRITORY COMPRISING THE PRESIDENCY
OF BOMBAY.
(EXCLUSIVE OF SIND)
1. AHMEDABAD
2. AHMEDNAGAR
3. BELGAUM
4. BIJAPUR
5. BROACH AND
PANCH MAHALS
6. BHARWAR
.7. KA1RA
8. KANARA
9. EAST KHANDESH
10. WEST KHANDESH
11. KOLABA
12. NASIK
13. POONA
14. RATNAGIRI
15. SATARA
16. SHOLAPUR
17. SURAT
18. THANA 76
DISTRICT COURTS UNDER THE MADRAS HIGH COURT
IN THE TERRITORY COMPRISING THE PRESIDENCY
OF MADRAS.
1. ANANTAPUR
2. ARGOT, SOUTH
8. ARCOT, NORTH
4 SELLARY
5. CHING'LEPUT
6. CHITOOR
7. COIMBATORE
8. CUDDAPAH
9. GANJAM
10. GODAVARI, EAST
»• See Acts II and VI of 1835.
* * See Bombay Civil Coutts Aotof 1880,Sec.5.
THE LAW OF PATENTS IN INDIA
[Ch. XVII
11.
GODAVARI, WEST
18.
MALABAR, SOUTH
12.
GUNTUR
19.
NELLORE
13.
KANARA, SOUTH
20.
RAMNAD
14.
KISTNA
21.
SALEM
15.
KURNOOL
22.
TANJORE, WEST
16.
MADURA
23.
TANJORE, EAST
17.
MALABAR, NORTH
24.
TINNEVELLY
25. TRICHINOPOLY
26. VIZAGAPATAM
) GANJAM
27. AGENCY TRACTS [ GODAVARI
) VIZAGAPATAM 77
DISTRICT COURTS UNDER THE ALLAHABAD HIGH
COURT IN THE UNITED PROVINCES IN THE TERRI-
TORY COMPRISING THE OLD PROVINCE OF AGRA.
1 .
AGRA (includes the
10.
FURRUKHABAD
area of Muttra)
11.
GHAZIPUR
2.
ALIGARH
12.
GORAKHPUR
3.
ALLAHABAD
13.
JHANSI
4.
AZAMGARH
14.
KUMAUN
5.
BAREILLY
15.
MAINPURI
6.
BENARES
16.
MEERUT
7.
BUDAUN
17.
MORADABAD
8.
BULANDSHAHR
18.
SAHARANPUR
9.
CAWNPORE
19.
SHAHJAHANPUR
DISTRICT COURTS UNDER THE PATNA HIGH COURT
IN THE TERRITORY COMPRISING THE PROVINCE
OF BIHAR AND THE PROVINCE OF ORISSA.
N. B. Though the territory of Orissa has under Section 4 the
Government of India Act of 1935 been made a separate Governor’s
Province for the purposes of executive administration , there is at pre-
sent no High Court or Chief Court or Court of a Judicial Commissioner
for Orissa. No mention appears to be made in the Government of
India Act of 1935 as to the future arrangements to be in force for the
judicial superintendence of the District Courts in Orissa. At
present the District Courts throughout the Province of Orissa
are continued to be administered under the superintendence of
' ' See Madras Civil Courts Act (Act III of 1873).
Ch. XVII]
DISTRICT COURTS
693
the High Court at Patna. It may be presumed however in view of the
marked tendency to independent Provincial autonomy now shown
in the new Government of India Act , that such an arrangement where
the District Courts of one Province are to be under the superinten-
dence of a Court of another province toill not long be allowed to
continue.
In Bihar : —
1. PATNA
2. GAYA
3. 8HAHABAD
4. SARAN
5. MUZAFFARPUR
6. DARBHANGA
In Orissa.
Name and Location of
District Courts : —
1. DISTRICT COURT OF
CUTTACK-SAMBALPUR.
(at Cuttack)
2. DISTRICT COURT OF
GANJAM-PURI. 78
(at Berhampur).
7. BHAGALPUR
8. MONGHYR
9. PURNEA
10. CHOTA NAGPUR
11. MANBHIJM —
SAMBALPUR
Having jurisdiction over
Revenue Districts of
1. Cuttack ; Balasore : and
Sambalpur.
2. Puri ; Ganjam ; and Kora-
put.
(Excluding the agency tracts
in Ganjam and Koraput).
N.B. In the District of Ganjam and Koraput the District
Magistrates concerned function as District Judges under the Superin-
tendence of the High Court of Patna ; and in the tracts known as the
districts of Angul and the Khondmals the Deputy Commissioners of
the respective areas have jurisdiction as District Judges subject to the
control of the Revenue Commissioner of Orissa who funtions as the
High Court for the said districts of Angul and the Khondmals.
DISTRICT COURTS UNDER THE HIGH COURT OF
LAHORE IN THE TERRITORY COMPRISING THE
PROVINCE OF THE PUNJAB.
1. RAWALPINDI 3. AMBALA
2. JHELUM A SARGODHA
* " See The Bengal, Agra and Assam Civil Courts Acts of 1887.
THE LAW 'OF {PATENT* IN INDIA
fOh.XMI
'•94
5. KARNAL 6. FEROZEPQRE
6. AMRITSAR 9. MONTGOMERY
7. <G>U*IRANW ALA .10. LAHORE
DISTRICT COURTS UNDER THE NAGPURBIQH COURT
IN THE TERRITORY COMPRISING THE CENTRAL
PROVINCES.
1. AKOLA
2. AMRAOTI
3. CHH3NDWARA
4. HQSHANGABAD
5. JUBBALPORE
6. NAGPUR
7. NIMAR
8. RAIPUR
9. WAKDHA 70
DISTRICT COURTS UNDER THE CHIEF COURT OF OUDH
AT LUCKNOW IN THE UNITED PROVINCES IN THE
TERRITORY COMPRISING THE OLD PROVINCE OF
Having jurisdiction over the
revenue districts <*f ;; —
OUDH.
Location and name of District
Court.
1. BARABANKI
2. FYZABAD
3. GONDA
4. HAHDOI
5. LUCKNOW
6. RAE BARELI
7. SITAPUR
8. UNAO
1. Bara Banki
2. Fyzabad and Sdttanpnr
3. Gonda and ‘Bahraidfa
4. Hardoi
5. Lucknow
6. Rae Bareli and Partabgarh
7. Sitapur and Kheri
8. Unao 80
DISTRICT COURTS UNDER THE COURT OF THE JUDI-
CIAL COMMISSIONER OF SIND IN THE TERRITORY
COMPRISING THE PROVINCE OF SIND.
N.B. By the Sind Courts Act(Bombay Act VII of 1926) which
was afterwards supplemented, by the Sind Courts ( Supplementary ) Act
1926 ( being an Act of the Indian Legislature No. XXXIV df 1926)
full provision teas made for the establishment of a Chief Court of
’• The District Courts in the Central Provinces were created under Section
16 of the Central Provinces Courts Acts, Central Provinces Act 1 of 1917.'
*°Diatrict Courts were first created in the province of Oudh by Act XIII of
1879. See also Section 23 Of U. P. Act lV of 1926.
<a.xvu$
DISTRICT <D0fTR3PS
QK
Sind . The' Act was to corns into force on such dais as the Governor
in Council (of Bombay )• might by notification in the Bombay Gaxette
appoint. The Act has not however as yet been put into, fores;' no
such notification having ■ been issued. The reason for this state of
affairs is presumably lack of finance. In the meantime Sind has
become a separate province for the purposes of executive administra-
tion, as provided for in Section 289 of the Government of India Act
of 1935 made effective by Notification of the Governor General in
Council as from 1st April 1936.
1. HYDERABAD (SIND)
2. SUKKUR
3. LARKANA
(Also at Karachi) 81
DISTRICT COURTS UNDER 7 HE COURT OF THE JUDI-
CIAL COMMISSIONER OF THE NORTH WEST FRON-
TIER PROVINCE : IN THE TERRITORY COMPRISING
THE NORTH WEST FRONTIER PROVINCE
There are two District Courts for the North West Frontier
Province which are situated at : —
1. PESHAWAR
2. DERAJ AT 82
DISTRICT COURTS UNDER THE COURT OF THE JUDI-
CIAL COMMISSIONER OF COORQ : IN THE TERRITORY
COMPRISING THE CHIEF COMMISSIONER'S PRO-
VINCE OF COORG : —
There is only one District Court for Coorg, which is situated:
at : —
MERCARA 83
* 1 These District Courts were created by Benibay Act XII of 1866, amended
by Bombay Act 1 of 1906 and again by Bombay Act 2 of. 1916.
“* See The North West Frontier Province Courts Regulation (No. I of 1931).
This District Court was created under the Coorg Courts Regulation of 1901.
Subordinate civil courts were created in Coorg by H. E. the Governor-General
* in Council’s Regulation 2 of 1881 passed under the authority of 32 Viet e 3.
THE LAW OF PATENTS IN INDIA
[ch. xvn
DISTRICT COURTS UNDER THE COURT OF THE JUDI-
CIAL COMMISSIONER OF AJMER-MER WAR A : IN THE
TERRITORY COMPRISING THE CHIEF COMMISSION-
ERS PRO VINCE OF AJMER-MERWARA
There is one District Court for Ajmer-Merwara which is
situated at : —
AJMER 84
DISTRICT COURTS UNDER THE COURT OF THE JUDI-
CIAL COMMISSIONER OF DELHI i IN THE TERRITORY
COMPRISING THE CHIEF COMMISSIONERS PRO-
VINCE OF DELHI:—
There is one District Court for this territory which is situated
at : —
DELHI
In the territories above mentioned there are, of course, in
addition to the District Courts above mentioned, multitudinous
subordinate courts, to which no reference for present purposes is
necessary ; since it is only in a District Court and not in any court
subordinate to a District Court that a suit for the infringement of a
Patent may under the Indian Patent and Designs Act of 1911, be
instituted.
Since Burma is to be separated from British India all parti-
culars relating to Burma have been omitted here.
AS TO THE REMAINING TERRITORIES OF BRITISH
IND IA : —
In regard to the territories already named an infringement suit
may be brought, as previously observed, in the appropriate District
Court of those mentioned.
In regard to the remaining territories of British India, consist-
ing of British Baluchistan, the Andaman and Nicobar Islands, and
Panth Piploda, it is not altogether clear in what Court a suit for
infringement of a Patent committed in these territories should be
instituted. There is no doubt that the monopoly created by an
Indian (i.e., British Indian) Patent runs in these areas equally as in
* 4 Sec Regulation IX of 192G.
Ch. XVII] JURISDICTION OF DISTRICT COURTS 607
the territories already named. It is also clear that a suit for infringe-
ment of a Patent should be instituted in whatever is the appropriate
“District Court” in the territory concerned. The position is how-
ever somewhat anomalous, since it appears that there are no “Dis-
trict Courts'* strictly so-called in these territories. It would seem
however that in these territories an infringement suit could be
brought in whatever is the superior court of civil jurisdiction
concerned.
Nature of the jurisdiction, in suits for the infringement of a Patent,
of the District Courts in British India.
The original civil jurisdiction (under which the jurisdiction to
entertain a suit for infringement of a Patent is of course included)
of any one of the abovementioned District Courts is governed by
the ordinary principles contained in Section 20 of the Civil Proce-
dure Code, the terms of which are as follows
“20. Subject to the limitations aforesaid, every suit shall be
instituted in a Court within the local limits of whose
jurisdiction —
(a) the defendant, or each of the defendants whore there are
more than one, at the time of the commencement of the
suit, actually and voluntarily resides, or carries on busi-
ness, or personally works for gain ; or
(b) any of the defendants, where there are more than one, at
the time of the commencement of the suit, actually and
voluntarily resides, or carries on business, or personally
works for gain, provided that in such case either the
leave of the Court is given, or the defendants who do not
reside, or carry on business, or personally work for gain,
as aforesaid, acquiesce in such institution ; or
(c) the cause of action, wholly or in part, arises.”
The antecedent Section 19 does not appear to affect the general
provisions of Section 20 in regard to the proper place of suing for
suits for infringement of a Patent. Section 19 is as follows : —
“19. WHSre a suit is for compensation for wrong done to the
person or to movable property, if the wrong was done
within the local limits of the jurisdiction of one Court
and the defendant resides, or carries on business, or
88
«B THE LAW OP PATENTS IN INDIA [Cfc XVO
personally works for gaint within the local limits of the
jurisdiction of another Court, the anit map be instituted
at the option of the plaintiff in either of the said Courts.**
From this it is clear that in the case of a District Court its
Jurisdiction is, (unlike that of a High Court previously considered
above), independent of any question of leave to sue being granted in
cases where a part of the cause of action only arose within the
Jurisdiction.
Therefore if a Patentee contemplates filing a suit for infringe-
ment of his Patent in any particular District Court he may rest
assured that that particular District Court will have full and com-
plete jurisdiction if the circumstances of the particular case fulfil
any one set of the following conditions ? —
1. If the Defendant (or all if more than one) at the time of
the commencement of the suit resides within the local
limits of the Jurisdiction of the Court.
or 2. If the Defendant (or all if more than one) carries on busi-
ness or personally works for gain within such limits.
or 3. . If the cause of action either wholly or even in part arose
within such limits.
or 4. In cases where there are more defendants than one, then if
any one of the Defendants resides within such limits pro-
vided either (a) Leave of the Court to sue in that Court
has been obtained or (b) the outside Defendants
acquiesce.
or 5. Similarly in cases where there are more defendants than
one, then if any one of the defendants carries on business
or personally works for- gam within such limits provided
either (a) Leave of the Court to sue in that Court has
been obtained or (b) the outside defendants acquiesce.
The plaintiff then need have no anxiety that any application
made by the Defendant will eust hie suit from the jurisdiction
chosen by the Plaintiff on any ground that it was only a small part
of the cause of action which arose within the jurisdiction. The
Plaintiff will be spared all anxiety in the way of any applications on
any such ground for revocation of leave to sue.
Ch. XVn] JURISDICTION IN BUTTS AGAINST THE SBC. OF STATE 699
Jurisdiction in Suits against the Secretary of State.
Now that the majority of Railways in India are nationalized
so that the legal owner of such railways is the Secretary of State for
India in Council, any suit by any patentee for any infringement by
any railway of his patent will require to be filed against the Secre-
tary of State as Defendant . 85 It may be worth whilo therefore
" A It would seem clear that a suit for infringement of Patent will lie against
the Secretary of State in a cise of an infringement of a Patent by a State-owned
Railway. Though the Secretary of State is immune from any legal liability in
tort for any act done in his sovereign capacity, it seems clearly established that
this immunity does not ordinarily extend to acts done in his capacity as successor
to the East Indian Company in commercial undertakings. See P. d> 0 . Steam
Navigation Company v. Secretary of State for India (1861) 5. Bom. H. C. R.
App. A. p. 1 ; Secretary of State for India in Council v. Moment (1913) 40. Cal. 391
and the principles stated in Me Inemy v. Secretary of State for India (1911) 38.
Cal. 797 ; Secretary of State for India in Council v. Cockraft (1914) 99. Mad. 351.
Compare also Secretary of State for India in Council v. Hart Bhatyji (1882) 5.
Mad. 273 (not followed in the Calcutta cases) ; and distinguish the following
cases in which the Secretary of State was held to be not liable owing to his
immunity by reason of the act complained of as being a tort, having been done
by him (or his servants) in his sovereign capacity : — Secretary of State for India
in Council v, Ramnath Bkatta [ 193 3) 37 C. W. N. 957; Nobin Chunder Dey v.
Secretary of State for India (1875) 1. Cal. 11 ; Shivabhat^an Durgaproead vs.
Secretary of State for India (1904) 28. Bom. 314 ; Ross v. Secretary of State for
India in Council (1913) 37 Mad. 55 ; Secretary of State for India in Council v.
Shreegobinda Chaudhuri (1932) 59 Cal. 1289. The next question is whether in
managing the state-owned railway the Secretary of State is acting as successor to
the East India Company in a commercial undertaking or in a sovereign capacity.
The case of M. D' Crux db Others v. Secretary of State for India in Council 40
C. W. N. 865 (the case though heard in 1932 having been only recently reported
in 1936) would appear to be some authority for the proposition that the Secretary
of State in respect of his ownership and management of the state-owned railways
is acting in the capacity of a successor of the East India Company. In that case
though the Secretary of State was held not liable for the claim in suit which was
for the tort of wrongful dismissal, this conclusion was arrived at only on the
ground that the Bast India Company itself would not have been liable for any
claim of alleged wrongful dismissal by it of its servants ; this immunity in this
particular respect being due to certain e xp r e s s provisions of the Statutes under
which the East India Company operated. For this reason alone it was held in
that ease that the Secretary of State also as successor to the East India Company
could not be liable for any alleged wrongful dismissal. There would not appear
to be any special provisions in any of the Statutes under which the East India
Company operated which exempted it from liability on a claim for the infringe-
ment of a Patent. It follows, if the management of the state-owned railways is
700
THE LAW OF PATENTS IN INDIA
[Ch. XVII
noting before leaving this question of jurisdiction and Clause 12 of
the Letters Patent, that it has been held in effect that the Secretary
of State does not dwell anywhere or carry on business anywhere or
personally work for gain anywhere within the meaning of Clause 12.
It is difficult to understand altogether the reasoning of the
decisions. It is submitted it might be understandable if the view
had been taken that the Secretary of State is in precisely the same
legal position as the Crown in England, that is to say in no case
liable for any tort : and not in any respect in any case liable in
such a way as a private individual is liable. But this is not the
law in India. For it has been repeatedly held that the Secretary of
State has a dual personality — the one when he functions as the
Crown and the other when he functions as the successor in business
of the East India Company — and that in the latter personality he is
liable for instance in tort, as any private individual. In that capacity
it seems difficult to see how he can be said to have no dwelling, and
no place where he carries on business and no place where he works
for gain. It is submitted that if he does, as Government shows a
progressively increased tendency to do, set up in business, as an
owner of Railways and the like, then the Government in British
India ought in all fairness to the general public to adopt one or
other of two courses. They ought either to do, as Government
does in England in such cases, make it known that the Secretary of
State wishes to waive all special rights accruing to him by reason of
his sovereign status in so far as his liabilities arising in matters
which concern the Railways or other purely commercial under-
takings are concerned, and in that sphere to submit to all the
held to be only a commercial undertaking, that the Secretary of State must be
liable as any other private individual for any infringment of a Patent by any
state-owned railway. Even in the last mentioned case however though the
learned Judge decided the case on the assumption that even if the Secretary of
State in managing the railway was acting as a successor to the East India Com-
pany, this being the view most favourable to the Plaintiff, nevertheless he would
not even then bo liable ; yet the learned Judge does not anywhere appear posi-
tively to have stated as his view that the Secretary of State in managing the
railway was not acting in a sovereign capacity. It seems curious that the point
does not seem ever to have been expressly decided whether the business of mana-
ging the state-owned railways on the part of the Secretary of State is done by
him in his soverign capacity or as successor to the East India Company in the
capacity of an ordinary commercial gentleman.
Ch. XVII]
IN SUITS AGAINST THE FEDERATION
701
liabilities of a private person. Or else they should introduoe definite
legislation declaring that in the spheres in which the Seoretary of
State is acting in a purely business capacity, as successor of the
East India Company, he has all the liabilities, including those as to
tort in general and as to infringement of Patents in particular, of a
private individual ; and is to be deemed to dwell at or carry on
business at any place where, according to the ordinary principle of
law applicable to ordinary persons, he would be held, if he were an
ordinary person, to do so. If one or other of these courses are not
adopted, it will entail great hardship on persons dealing with the
Secretary of State in his business capacity, as when dealing with the
Bailways.
However as the law stands at present there is no doubt about
it that there have been decisions in several cases to the effect al-
ready indicated : and accordingly the Secretary of State can only
be sued in a Chartered High Court in cases either where the whole
of the cause of action has arisen within the jurisdiction or whore a
part has, and leave has been obtained under Clause 12 : and no suit
can be brought against him in the High Court on the other grounds
which are open in the case of a private individual, vix. that he
dwells or carries on business or personally works for gain within
the jurisdiction.® 6
Jurisdiction in suits against the Federation of India.
In the event of the Federation of India which is contemplated
in the Government of India Act being created at any future date,
the Railways presumably will vest in the Federation of India or in
the Crown for the Federation of India. In such event any suit for
infringement of a Patent by a state-owned Railway will have to be
brought against the Federation of India. 87
It would appear that in that event the principles mentioned in
the last preceding paragraph as having been applied in the oases to
the Secretary of State in Council will equally apply to the Federa-
"• See Doya Narain Tnvary v. Secretary of State for India in Council. (1887).
11. Cal. 256 ; Rodrieks v. Secretary of State (1913) 40. Cal. 308 ; and G. Qovinda-
rajulu Naidu ▼. Secretary of State for India in Council. (1927) 50. Mad. 449.
87 See Government of India Act, 1935, Secs. 172, 173, 176, 177 and 179 ; also
Part VIII, Secs. 181 to 199.
702
THE LAW OF PATEN1B IN INDIA
[Ck. xvn
tion of India. If so, the Federation of India, though owner of the
state controlled Railways of India, will have to be treated in law as
having so dwelling and no place where it carries on business.
Accordingly a suit for infringement of a Patent by a state-owned
Railway will then, equally as now, only be able to be brought in a
Chartered High Court or in a District Court where the whole oause
of action has arisen or where part of the cause of action has arisen ;
and in the oase of a High Court in the latter case only with leave to
sue obtained by the High Court in question.
5. Limitation of suits.
Article 40 of the Indian Limitation Act governs the period of
limitation within which suits for infringement of patent must be
brought. The wording of the article is as follows : —
“40. For compensation for infringing copyright or any other
exclusive privilege : — Three years, (from the date of the
infringement).”
6. Questions of estoppel and res Judicata where there have been
previous proceedings between the same parties —
In considering whether a suit should or should not be filed
questions will in certain cases arise as to whether the Plantiff is
estopped from bringing a suit for infringement by reason of
previous proceedings between the same parties. Circumstances can
be imagined seldom to occur where the Plaintiff will be estopped by
conduct from, bringing a suit. There will however more frequently
arise cases where the Plaintiff is estopped or barred by res judicata
from bringing a suit against the Defendant by reason of some
previous decision in previous proceedings between the same parties.
Thus if in a previous suit between the same parties the patentee's
patent had been held to be invalid the patentee would be conclusively
barred from bringing a fresh suit against the same defendant in res-
pect of another infringement of the same patent, unless of course the
previous ground of invalidity had been sinoe cured by amendment
of his specification.**
In India the matter is covered for most if not all practical
purposes in regard to previous litigation in Court by Section II of
the Civil Procedure Code. Reference should be made to the precise
*• See Hor rocks ▼. Stubbs (1895) 12 B.P.G. 540.
Cfc XTO) QUESTIONS OF ESTOPPEL AND RES JUDICATA 70S
wording of the Section itself and to the comments thereon in Mulla’s
Civil Procedure Code (10th Edition : 1934) p. 37 et seq. It is not
therefore necessary in that connection here to consider old English
cases concerning estoppel by record apart from cases within that
section.
It will be noted that the section is only applicable between the
same parties or “between parties under whom they or any of them
claim litigating under the same title”.
At the same time it is to be observed that it has been held by
the Privy Council that the principle of res judicata which prevents
the same case being twice litigated is of general application and is
not limited to the specific words of the Code and in short that
Section 11 is not exhaustive. 80 Similarly it has been held that when
a question of an interlocutory nature and therefore not strictly
within Section 11, has been decided between certain parties in a
suit yet this is an effective bar to a subsequent suit litigating the
same question between the same parties. 00
Where the same question has been the subject of previous
arbitration proceedings between the same . parties the award will,
under the Indian Arbitration Act, as an estoppel, act as a bar to a
subsequent suit. 01
Similarly by reason of estoppel or res judicata the Defendant
may be barred from making an effective defence to the suit. 02
Cases of estoppel by conduct will arise for example where the
Defendant is an assignor or a licensee of a patent from the Plaintiff.
»* See Hook v. Adminiatmtor General of Bengal and, ora. (1921) 48. Cal.
499 or 48 1. A. 187 : and Uanutnhawlra Rao v. Ramehandra Ran (1982) 45- Mad.
320 or 49 I. A. 129 : in these cases the argument was put forward that when
the previous proceedings were interlocutory proceedings in execution and not a
suit, therefore Section 11 was not applicable and as the section was exhaustive
there was no bar to the subsequent proceedings, but the Privy Council held as
indicated above that the section was not exhaustive and the subsequent pro-
ceedings were barred.
*° See KcUipada Dp. and ora. v. Dwijapada Das and ora. (1930) 34 C. W. N.
201 (P. C.) ; whereby previous cases to the contrary effect must be considered as
overruled.
*' See Sec. 8 of the first Schedule of the Indian Arbitration Act (Act IX of.,
1899b but MU C4h Hawaii v. Elhot „ I. H. and C. 797 or 32. L. J. Ex. 120
sad Russel on Arbitration and Award (13th eda : 1936) at p. 418.
•• Boo also Chapter XVI at p. 601.
704
THE LAW OF PATENTS IN INDIA
[Ch. XVD
Cases of res judicata will arise in cases similar to those above
already considered but where the previous decision has been adverse
to the Defendant. Thus where the Plaintiff’s patent has been held
to be valid in a previous suit, the defendant will be barred by res
judicata from setting up a defence of its invalidity in the subsequent
suit : and this none the less though he may then seek to do so on
entirely new grounds. 98
And of course the result in law and the bar to subsequent
proceedings is the same whether the judgment is after a contested
hearing or by consent. 94
A distinction has been made between res judicata and estoppel
for which reference may be made to Mulla’s Civil Procedure Code
(10th Edition) p. 389 and the cases there cited, but the distinction
there made is of no importance in connection with the matter now
under discussion, which is merely primarily, how far if at all the
Plaintiff may be barred from success in his projected suit and secon-
darily how far, if at all, the defendant will be barred from a defence.
It may conveniently here also be noted that by Section 10 of
the Civil Procedure Code it is provided to the effect that where a
previous suit between the same parties is pending, the subsequent
suit may be stayed.
Where there has been a previous decision of the same or one of
the same questions in issue, but in proceedings between
different parties.
In such d case though the previous decision is in no sense a
res judicata or an estoppel so as to operate as a legal bar to the
subsequent proceedings yet in certain matters such as on a question
of the construction of the specification of the patent in question, the
Court will usually hold itself bound to follow the previous decision. 98
•’ See Murex Welding Processes Ltd. v. Wei dries (1922) Ltd. (1933) 50
R.P.C. 178 at 182 ; Thomson v. Moore (1889) 6 R.P.O. 426 and (1890) 7 R.P.C. 325
(H.L.) ; Shoe Machinery Co. v. Cntlan (1896) 1 Oh. 667 or 13 R.P.O. 141.
1,4 See Tlmnson v. Moore above and Brown v. Ifastie dh Co. Ltd. (1906)
23 R.P.C. 361 (H.L.)
• 1 See (1886) 3 R.P.C. 109 at p. 114 ; (1889) The Automatic Weighing Ma-
chine Co. v. The Combined Weighing Machine Co. 6 R.P.O. 367 (C.A.) ; (1889)
Edison and Swan Electric lAght Go. v. Holland. 6 R.P.C. 243 (G.A.) at p. 300. See
also for the principle that a decision in a suit for infringement between A & B is
not a bar to a subsequent petition with the fiat of the Advocate-General by B>
Ch. XVII]
INSPECTION
706
7. Inspection of Defendant’s machine before filing of Plaint.
In England a Plaintiff has been allowed, on an application mado
by him on the summons for directions, an order for inspection of the
proposed Defendant’s machine before delivering to the other side
his Statement of Claim ; so that he may in a proper case be in a
position to supply with his claim proper particulars. The applica-
tion was made under Order 50 Rule 3 of the English Rules of the
Supreme Court. 96 There appears no positive provision of law or
procedure making it impossible for the course adopted in that case
to be allowed in a proper case in India. But it is more likely to be
held in India that no application for inspection of such a machine
can well be made unless a Plaint has been filed prior to such applica-
tion or is at least filed simultaneously with it ; otherwise, there
being no suit in existence, no application strictly speaking — which
can only be made in the suit — would lie. An undertaking at least
from a responsible attorney would be required to be given that the
necessary suit would in fact be filed. And the Courts in India may
be less inclined to accept such an undertaking and to dislocate the
ordinary routine for the filing of suits by doing so, instead of insist-
ing on the Plaint being filed first.
The Plaintiff may however plead that he proposes to give
further particulars of his claim after he will have obtained inspec-
tion of the Defendant’s machine from the Defendant.
As to inspection of documents before filing of Plaint.
Should the Court take the view that no order can be made in
the suit before the Plaint is filed, it is, in practice not possible for
inspection to be obtained of the documents in Defendant’s possession
before drawing the Plaint. Yet it will often happen that full and
proper particulars of the claim cannot be given in the Plaint in the
absence of particulars which are within the knowledge of the
Defendant and not of the Plaintiff and which may appear from an
inspection of Defendant’s books of accounts or other documents.
In such a case all that the Plaintiff can do is to state in his Plaint
who then sues not as a private individual but as a member of the public, page 443
above and the cases cited. The position will be different where the earlier deci-
sion is a decision in rem, which will be binding against all the world.
00 Bee Edler v. Victoria Press Mannfarturiny Company. (1910) 27 R.P.O.
114.
89
706
THE LAW OF PATENTS IN INDIA
[ch. xvn
that he reserves to himself the right to make further claims in
respect of further reliefs and will give further particulars of his
claim after inspection of the Defendant’s books and documents.
8. Service of the writ
Service of the writ of summons in Patent suits is governed by
the ordinary rules relating to service in all suits. It is unnecessary
therefore here to go in any detail into questions concerning the
procedure for service of the writ of summons.
In suits for infringement of Patent it will frequently happen
that recourse has to be had to service of the summons by registered
post : leave being obtained for the purpose . 07
So long as it can be shown that the postman has served the
summons on the proper person, this will be held to be good service.
Accordingly even though the registered letter is refused by the
Defendant and the postal receipt is marked “refused”, this will
ordinarily be held to be sufficient . 08
If however the Defendant subsequently appears and denies
knowledge of the writ of summons, the Court will probably order a
new trial in such a case."
If the suit is filed in a District Court the writ of summons is
in all cases served on the Defendant through the Court. If
the Defendant resides within the jurisdiction of the Court in
which the suit is filed, the writ of summons is served personally
on the Defendant by the serving officer of that Court. If
not then tins arrangements for service whether through another
appropriate Court or by registered post are made by the Court in
which the suit is instituted. Neither the Plaintiff nor the Plaintiff’s
Attorney has any concern in the actual process of serving the writ
of summons when the suit is instituted in a District Court.
“ 7 In the Calcutta High Court the practice is to obtain such leave on
application to the Master.
4,M See Section 27 General Clauses Act (Act 30 of 1897); (1911) Baluram
Ramkissm and ors. v. Bai Pannabai and anr. 35. Bom. 213 ; (1914) Hoopchqnd
Ranyildas v. Jiaji Hussein Uaji Mahomed Soudagar 16. Bom. L.R. 204 ; the
matter is governed in the Calcutta High Court by Rule 11 of Chapter VIII of
the Rules of that High Court ; compare Mulla's Civil Procedure Code (10th
Edn.) p. 519 and 520 commenting on a similar point arising on Order 5 Rule 21,
Civil Procedure Code.
00 See Sunder Spinner and anr v. Mahan Bhula (1922) 46. Bom. 130.
Ch. XVII]
SERVICE OF THE WRIT OF SUMMONS
707
If the suit is instituted in a High Court, the position is differ-
ent : being governed by the rules of the particular High Court.
In the Calcutta High Court originally all writs of summons
were served on the Defendant through the Sheriff. Now (see Rule
14 of Chapter 8 of the Rules of that High Court as amended on
17th August 1935), “where, the Plaintiff's Attorney has received a
letter from the Defendants Attorney expressing readiness to
accept service,” the writ of summons may be served by the
Plaintiff's Attorney or some person employed by him independently
of and withont reference to the Sheriff. Formerly, moreover, if
leave was obtained to serve the writ of summons on the Defendant
by registered post, the writ of summons was in all cases required to
be sent to the Defendant by registered post by the Sheriff : (under
the Rule 11 of Chapter 8 of the Rules of that Court prior to its
amendment on 17th August 1935). Now where such leave to
serve by registered post is granted, it would seem that leave may, if
desired, at the same time also be granted by the Court for such
posting to be effected direct by the Plaintiff's Attorney indepen-
dently of and without reference to the sheriff. 100
100 Order 49 Rule 1 of the Civil Procedure Code in itself gives power to
Attorneys of a High Court to serve direct, without reference to the Court or to
the Sheriff, Notices (such as Notices of Motion) in certain categories, from which
the writ of summons in the suit itself is excluded. The mere absence however of
a grant under the Civil Procedure Code of power to serve a Writ of Summons in
the suit is not a prohibition against that power being granted outside the Civil
Procedure Code. Formerly the position was that the old form of Rule 1 1 of
Chapter 8 of the Calcutta High Court Rules made it obligatory that in all cases
of service of the writ of summons in the suit by registered post, the posting was
to be done through the Sheriff’. Now the words “by the Sheriff to him” have been
omitted from the amended Rule. Accordingly the position is that this Rule 11 of
Chapter 8 does not make it obligatory for the service to be effected through the
Sheriff; and therefore the words “un less the Court or a Judge shall otherwise
order’' in Rule 14 of Chapter 8 of the Rules of the Calcutta High Court may
now be invoked. Accordingly it seems in a case in the Calcutta High Court
where the Writ of Summons is to be served by registered post, provided the
leave of the Court to do so is obtained, there is no bar in the Code or the Rules
to prevent the Writ of Summons in the suit itself (just as in the case of a Notice
of Motion in an interlocutory matter) from being posted and served by an
Attorney of a High Court without reference to the Sheriff.
708
THE LAW OF PATENTS IN INDIA
[Ch. XVII
Expense.
Before he embarks on Court litigation in the form of an
infringement suit, it is extremely advisable that the Plaintiff
should carefully consider the likely and possible expense of such a
course . 101
101 Ihe following interesting comments have been made in regard to the
expense of patent litigation by Mr. Haddan (President of the Chartered Institute
of Patent Agents in the United Kingdom) : — “Expense of Litigation — Litigation
relating to patents is comparatively expensive owing to the technical character
of the subject-matter. The cases which come before the Courts are not simple, of
which the facts are readily comprehended by the average non- technical mind, but
usually require for their understanding relatively extensive explanation by experts
with the assistance and conduct of Counsel, who likewise have the ability to
comprehend and explain the phenomena which bear on the case at issue. Patent
cases naturally require a larger expenditure of time both for their preparation
and for their presentation to the Court, than is needed in litigation concerned
with (the) simplest subjects, and the basis of fees is also higher. A source of
expense not usually encountered in litigation on other subjects is the expert’s
fees, which may run into a considerable sum according to the time that may be
needed for preliminary study, tests, &c., in order that the expert may have a
sufficiently inti mate knowledge of the invention in question and the probable basis
of the defence, to supply adequate answers to the questions of examination and
cross examination. Before litigation is commenced it is extremely desirable to
ascertain as fully as practically possible that the patent is supportable and that
the supposed infringement is within the scope of the claims. It is usual to
supplement the inadequate search of the Patent Office by further searches among
foreign patents and other sources, and to submit the matter for Counsel’s opinion
before embarking on actual litigation. These various occasions of expense account
for the relatively high cost of patent litigation and rather tend to show that a
judicious arrangement of compromise may be in the better interest of both parties.
Where the matter in dispute is not of sufficient value to warrant the expense
of Court litigation or the not much inferior cost of an arbitration as usually
practised, it may be suggested that a convenient method for the settlement of the
dispute may be found in the submission of a joint case on behalf of the patentee
and on behalf of the “infringer’ 1 , to an arbitrator, for example, a Patent Counsel,
for an opinion which could be treated as an award. This method, with such
minor variations as may be required by the nature of the points at issue, usually
leads to a fair result without the proverbial uncertainties of litigation and at a
fraction of the expense of the latter.” See Haddan’s Compendium (1931 edn.)
p. 190.
Ch. XVII]
CONTENTS OF THE PLAINT
709
PART III
AS TO OTHER PRELIMINARY MATTERS SUCH AS MAY ARISE
PRIOR TO THE HEARING OF THE SUIT ITSELF.
Certain matters are now discussed in this part of this chapter
under the headings already indicated at page 646 ; such different
headings being consecutively numbered as before merely for con-
venience of reference.
1. The Plaint.
The Plaintiff will need to state in his Plaint the following
facts : —
(i) Particulars of the grant of the Patent and the nature of
Plaintiff’s title as registered patentee. He may mention as a short
descriptive title* of the invention the title of the Specification and
give the number and date of the Indian Patent and state whether
the Patent was originally granted to him or if not to whom and in
the latter case the date and particulars of the assignment to him. In
any event he should state positively that he is the registered
patentee.
(ii) He should state the period of the monopoly to which he is
entitled ; giving the date up to which it is current ; and it will be
as well also in case there is any possibility of ambiguity or confusion
in regard to the infringing aots having taken place before the mono-
poly commenced, that he should state the date from which his mono-
poly began.
It may be observed that in many cases nothing will turn on
these dates but it is suggested that by drafting the Plaint in this
form the Plaintiff’s advisers will be employing a useful check over
the essential features which are necessary for success in their
Clients’ case ; which may prevent discrepancies as to dates being
overlooked that might give a loophole to the Defendant for establish-
ing a good defence. It may sometimes happen that it is not until
the litigant’s case is sent to Counsel for the Plaint to be drawn and
the oase is put on paper that certain salient features of the case are
appreciated.
(iii) It will be as well, as is usually done, to state positively
that the Patent is valid. There is an inconsistency in the decisions
710
THE LAW OF PATENTS IN INDIA
[Ch. XV 11
of reported cases as to whether the onus of establishing the validity
of the patent is on the Plaintiff or whether the onus to establish its
invalidity is on the Defendant. The general practice is for the
Plaintiff to give evidence sufficient to Establish a prima facie case
of validity : particularly on the issues of novelty, utility and
sufficiency. 1
(iv) It is then necessary to state the acts which have been
done by the defendant such as are complained of as infringements
and to state which of the claims of the Plaintiff’s Specification are
said to be infringed.
English Practice.
The English practice as to this is, that the necessary particu-
lars are given not in the body of the Plaint but in a statement called
“Particulars of Breaches” which is delivered with it. The practice
is specifically laid down in Order 53A Rules 11 & 14 of the Rules of
the Supreme Court which read as follow : —
“11. In an action for infringement of a patent the plaintiff
must deliver with his statement of claim particulars
of the breaches relied upon.”
“13. A defendant in an action for infringement of a patent
who under section 32 of the principal Act counter-
claims in the action for the revocation of the patent
shall with his counterclaim deliver particulars of any
objection to the validity of the patent on which he
relics in support of his counterclaim.”
Indian Practice.
There is no express provision to this effect in India : there
being no rules and orders at all in the Schedule of the Civil Proce-
dure Code specially relating to Patent Suits and no Rules even of
the Calcutta, Bombay, or Madras High Courts having any special
reference to such suits. On the other hand there is nothing in the
Civil Procedure Code or elsewhere which would in any way interfere
with this practice being adopted which has been found by experience
in England to be useful. In the course of the hearing of one patent
appeal in an infringement suit in the appellate bench of the Calcutta
High Court, the view has been expressed that it would be convenient
1 See Fletcher Moulton (1913 : Edn) p. 188 and Bee note (c) and cases
there cited.
Ch. XVII]
PARTICULARS OF BREACHES
711
if a practice similar to the English Practice were to be adopted in all
infringement suits in India . 2 The chief advantage of the practice
appears to be that in a suit where many acts of infringement are
relied on or the nature of the infringement relates to intricate
technical features, these particulars can be set out clearly and at
length, if necessary, without encumbering the actual pleadings in the
case from which the main points in issue may the more readily be
apparent.
In any event whether the English practice is adopted of having
separate Particulars of Breaches or what has hitherto been the more
usual India practice, it is advisable that proper particulars of the
facts indicated above should be stated in the one document or the
other.
(v) It is then usual in India, though perhaps not strictly
necessary, to state that though demand has been duly made, the de-
fendant has refused to desist from the infringement or to deliver up
proper accounts or to deliver over stocks of the offending articles :
or whatever may be the position in this respect. It is submitted that
no demand is necessary in order to establish the Plaintiff's right to
succeed generally if infringement is made out and to his right to a
certificate or declaration and to at least nominal damages and costs;
but it is also submitted that if it were the fact that the Plaintiff had
gone to Court without giving the Defendant any notice of his com-
plaint as to infringement and the Defendant at the earliest oppor-
tunity before the Court expressed his regret for the infringement
and his intention not to commit any further infringements after the
matter had been brought to his notice, it might be reasonable for the
Court not to grant any injunction or at least to refuse the Plaintiff
his costs of the suit.
(vi) If a certificate of validity questioned has been obtained
in a previous suit, this fact should be peaded. ,J '
(vii) The usual paragraph will then follow as to the Plaintiff's
cause of action showing when and how and where it arose, showing
* LJnreported. See also Lalluhhai Ghakubhai v. Ghimanial Ghnnilal d ‘ Co.
(1935) 37. Bom. L. R. 665 at p. 668, where the practice of having Particulars of
Breaches annexed to the plaint was adopted without question.
■ See The Pneumatic Tyre Ltd . v. R.F. Chisholm and Co. (1896) 13.
R. P. C. 488.
713 THE LAW OP PATENTS IN INDIA [Ch.XVII
that the Court has jurisdiction and showing that the suit is not
barred by limitation.
(viii) After this, to conclude the Plaint, will follow the prayers,
stating the nature of the various reliefs asked for by the Plaintiff.
Reference may be made as to these matters to Part V below
where the final reliefs, which may be obtained in the suit, are
discussed in detail.
(ix) The Concise Statement, the List of documents filed with
the Plaint and the List of documents on which the Plaintiff relies
will all be drawn in the usual form as for any ordinary suit ; and the
verification verified in the same way. The Plaint will then be filed
in the ordinary way in the offices of the Court, leave to sue being
obtained, as already mentioned, if required.
Whether Plaintiff may give evidence outside his particulars of
breaches.
In the United Kingdom it is provided by Order 53A Rule 19
as follows : —
"At the hearing of any notion, petition, or counterclaim rela-
ting to a patent, no evidence shall, except by leave of the
Court (to be given upon such terms as to the Court may
seem fit), be admitted by proof of any alleged infringement
or objection not raised in the particulars of breaches
or objections respectively.”
Under Rule 17 of the same Order S3A the Court in the United
Kingdom has a wide discretion to allow the amendment of particulars
of breaches and this course may be availed of to complete particu-
lars not fully given in the first place. But the final result remains
clear — that the Plaintiff must before the disposal of the suit give
full and definite particulars of whatever breaches he intends to rely
on, so that the Defendant knows what case he has to meet. And this
principle is firmly maintained in practice in the United Kingdom.
In India there is no positive rule to the effect abovementioned.
It would therefore appear that there is no definite provision of law
in India which makes it necessary for a Plaintiff to give the requisite
full particulars in his Plaint ; or which will bar him in India, if he
pleads infringement merely generally but has not given any proper
particulars, and the Defendant chooses not to ask for any particulars,
Ch. XVII]
INTERIM INJUNCTION
713
from giving evidence of such acts of infringement as he may desire
to prove at the hearing.
But on general principles a party is entitled to particulars of
the case he has to meet, and therefore, if the Defendant makes an
application for particulars and it is found that the Plaintiff has not
inserted the proper particulars in his Plaint, he will no doubt be
ordered to do so under Order 6, Rules 4 & 5 of the Civil Procedure
Code eventually ; at the same time having to pay the costs of such
application. It is therefore advisable for the Plaintiff in India as in
England to give the full particulars in his Plaint in the first place.
Should the Plaintiff not have done so, and should the Defendant
make an application for particulars, then if the Plaintiff fails to give
the requisite particulars, no doubt the Court even without the aid of
any rule in India similar to the English Order 53A, Rule 19, would
hold that the Plaintiff would not be entitled to give any evidence of
any breaches of which proper particulars had not been given.
2. Interim Injunction.
In many cases it will be of the utmost importance to the
Patentee, when he has discovered an infringement, to put a stop to
the infringement at the earliest possible moment. In a proper case
an injunction may be obtained from the Court, prior to the hearing
of the suit, restraining the infringer from committing any infringe-
ment pending the hearing of the suit.
The matter is governed generally by the ordinary principles of
law relating to the granting of injunctions in general which are con-
tained as regards India in the Civil Procedure Code (Act V of 1908)
in Section 91 and in Order 39, Rules 1 to 5 ; but it will be worth
while here to consider in some detail the factors arising in patent
cases upon which the likelihood of success or failure in obtaining
such an interim injunction may depend.
The application for interim injunction may be made as is
explained hereafter in a suitable case immediately on filing the
Plaint and before even the writ of summons in the suit has been
served.
Ex parte application.
The ordinary grant of an injunction which is expressly and
directly provided for in the Code of Civil Procedure is contemplated
90
714
THE LAW OF PATENTS IN INDIA
[ch.xvn
as being made on motion after notice of motion has been served on
the other side. It is clear however from the exceptions referred to
in Order 39, Bale 3 of the Civil Procedure Code (and, as to the
Calcutta High Court, in Chapter XX Buie, 3 of the Buies of that
High Court) that the making of other applications for a temporary
injunction to the Court ex parte and without notice to the other side
is also sanctioned. In practice in cases of infringement of patents,
just as in cases of libel, or passing off, or infringement of copyright,
or infringement of copyright in a registered design, such ex parte
applications are common. Indeed it may be said that in the majority
of such suits, owing to the urgency of the matter to the Plaintiff, it is
found in practice advisable if there be considered to be a fair prospect
of success to make the application for the temporary injunction at the
earliest possible moment : which entails its being made ex parte and
without notice to the other side. The considerations mentioned
below affecting the matter should however be carefully considered.
General considerations as to ex parte applications.
In order to support a prayer for an injunction being ordered ex
parte it is necessary to satisfy the court that the delay caused by
proceeding in the ordinary way, that is to say after notice to the
other side, would or might (as it is put in Ch. 20, Buie 3 of the
Calcutta High Court Rules) “entail irreparable or serious mischief”
or would (as it is put in Order 39, Rule 3 of the Civil Procedure
Code) “defeat the object of granting the injunction.” *
The ex parte application here referred to can only be made
after or at the time of filing the Plaint. It is necessary therefore
4 The practice in the Calcutta High Court when it is desired to obtain an ex
parte injunction is to have the Notice of Motion and the Petition in connection
therewith duly prepared and engrossed, the Petition being duly verified by
affidavit, and for Counsel to hand these documents himself in to the Court at the
time of moving the application ; and for Counsel to make the application in
Court at 11 A. M. when the Court sits ; or in cases of extreme urgency at 2. 30
P. M. when the Court takes its seat after the Midday adjournment, or even at
4. 30 P. M. immediately before the rising of the Court. The application is referred
to as “an ex parte court application". Since an injunction cannot be ordered in
Chambers, such an application, even though ex parte, cannot be moved in
Chambers. See as to the Calcutta High Court, the High Court Boles (3rd Edn. :
1990) Chapter 6, Buie 11 and Buie 12 and the List of matters which may be
disposed of in Chambers at p. 768, also Chapter 20, Buie 3.
Ch. XVII.]
EX PARTE APPLICATIONS
716
either that the Plaint should have been drawn and filed already in
the office of the Court, or that a Plaint should be drawn along with
the Notice of Motion and Petition and then that the Plaint should
be presented to the Judge in Court with the other documents by
Counsel and leave obtained by him to file the Plaint then and there
before the Judge in Court at the time of making the application for
the ex parte injunction.
If the temporary injunction thus asked for cx parte is granted,
the practice is for an order to be made directing the notice of
motion to be served on the other side and fixing a certain date as the
returnable date of the notice of motion fortho hearing of the motion ;
and for it to be ordered that the interim ex parte injunction is to
continue only pending the decision of the motion itself. The period
during whioh the injunction obtained on such an ex parte applica-
tion will continue in force may thus be as little as two days — if an
early date is fixed for the hearing of the motion ; in any ordinary
case it will not in any event exoced two weeks or thereabouts, being
the time taken for the getting of instructions on each side and for
the preparing and swearing and delivering of affidavits in connection
with the motion. In a case where the Defendant is resident abroad
or in some such exceptional case, or, if, as has occurred before now,
there is a block in the disposal of the motion list owing to the
illness of judges or to an insufficiency of judges on the original side
of the High Court or to other exceptional causes, then it may
occasionally happen that, the motion not being heard for say two
months, the ex parte injunction will oontinuc for that period. In the
ordinary way the ex parte injunction will be effective for a few days
only. It is for this reason all the more necessary to consider
whether the obtaining of it is of any vital importance. After this
the notice of motion with a copy of the grounds (i. e. the Petition)
is then served on the other side, and the original petition which is
filed at the making of the ex parte application iB used as the
Petition in support of the motion at the hearing thereof ; the
opposite party being at liberty to file an affidavit in opposition to
the Petition and the Petitioner being at liberty to file an affidavit in
reply thereto in the ordinary course.
Delay.
It would seem that delay on the part of the Plaintiff in coming
to Court will be even more fatal to an application by him for an
710
THE LAW OF PATENTS IN INDIA
[Ch. XVII
ex parte injunction than in the caae of an application by him for an
injunction on motion after notice to the other side. He should apply
preferably the very day he hears of the infringement . 5
Special considerations as to ex parte applications in Patent Suits.
There is as yet no settled practice of the Courts in India in
regard to the granting or refusing of ex parte interim injunctions
in caseB where the Patent has not been established. If the English
practice is followed in this respect no injunction will be granted ex
parte in a case where the Plaintiff's Patent has not been well
established, since in England no ex parte injunction is granted
unless the Plaintiff's Patent, apart from its age, has actually been
validated by a certificate in the Courts . 6
Where the Plaintiff's Patent has been validated in the Courts
(that is by the grant of a certificate of validity questioned) and where
it is shown that the matter is one of special urgency by reason of
circumstances similar to those in the case of British Thomson-Hous-
ton Co. Ltd. v. Philip Henry d& Co. Ltd . — where the facts established
on affidavit were that there was a considerable subterranean trade in
the infringing articles imported from abroad by dealers who were
men of straw such as the Defendant, and that if the Plaintiffs pro-
ceeded by way of serving a writ on the Defendant the result in such
cases was that the Defendant either sent the infringing articles
away elsewhere or returned them to his foreign principals ; so that
the infringing articles were again the potential source of infringe-
ment in the hands of other people ; and the Plaintiff was prevented
from having his proper remedies and in particular was deprived of
the remedy which he would be entitled to in the action of delivery
up of the infringing articles — an interim injunction will be readily
granted ex parte . 7
* See Greer v. Bristol Tanning Co. (1885) 2. R. P. 0. 268.
a See British-T hom son Houston Coy. Ltd. x. Philip Henry <0 Coy. Ltd.
(1928) 45. R. C. 218 at p. 220 (C. A.) where it was conceded by Plaintiff’s
Counsel that the procedure there relied on was not applicable unless the Patent
had been validated in the Courts. And see for the general principles of the
practice of the English Courts as to interim injunctions in Patent cases the
judgments of Atkin L. J. & Serutton LJ. in Smith x. Grigg Ltd. (1924) 41. R.P.C.
149 at 153, 154 & 155.
7 British Thomson-Housion Coy. Ltd. x. Philip Henry <Sb Coy. Ltd. (1928)
45. R. P. C. 218 (C. A.) where an interim ex parte injunction was granted on
appeal from a judgment refusing an ex parte injunction. See also Moser x.
Jones db Co. (1893) 10. R. P. C. 368.
Ch. XVII.] SHORT NOTICE 717
Leave for short notice of Motion.
If the court refuses to make any order for an injunction on the
ex parte application, then it will in many cases give leave to serve
short notice of motion either the next day or for an early date less
distant than the 4 days normally required to elapse between service
of the notice of motion and the returnable date to be fixed for the
hearing of the motion. In many cases the saving of time which can
be effected by such short notice is as useful as the obtaining of the
ex parte injunction in the first place.
Ex parte application before filing of Plaint : orally.
If the matter is of intense urgency, it is submitted that the
Court has ample power to grant an ex parte interim injunction on
the mere oral application of Counsel ; even before any Plaint has
been filed and in the absence of any notice of motion or verified
Petition. In such a case it would of course ask for an undertaking
from tho Solicitor instructing Counsel to file the requisite Plaint
within a certain definite time, say by the next day, and also an
undertaking by Counsel on behalf of his client as to damages. 6 * 8
It appears that such a course has frequently been adopted in
the English Courts in urgent cases of libel where it is clear that
there has been no time for the usual documents to be drafted and
where it may be supposed that delay in granting the injunction will
entail irreparable damage to the applicant. Sir Hugh Fraser obtained
such an injunction on more than one occasion when appearing as
Counsel for the Plaintiff in a libel action. It has to be here stated,
though, that there does not appear to be any precedent of such a
course ever having been adopted by an Indian Court. In India, un-
like England, a power of attorney is required to be filed by the
attorney in any suit. If this alone were filed, it is submitted there is
no reason why in a proper case an Indian Court should not issue an
interim ex parte injunction in the circumstances described.
It may be surmised that in a case of an infringement of a
Patent it will only be in a very exceptional case that the circum-
stances will justify the Court in acting in the absence of any affidavit
6 i. c. An undertaking to abide by any order the Court may make as to
damages, in case the Court should thereafter be of opinion that the Defendant
should have sustained any by reason of the granting of the injunction.
718
THE LAW OP PATENTS IN INDIA
[Ch. XVII
and on the mere oral representation of Counsel and before the filing
of any Plaint : but it is not impossible to imagine such an excep-
tional case. 9
But see what is stated as to the necessity in practice of the
Patent having been well-established, before the Court usually, in
practice, grants any interim injunction at all. All that is here said
must be taken as being subjeot to that qualification and to the
Plaintiff’s having a very strong case on the merits.
Application on motion after notice to Defendant.
Whether the matter has come before the Court before on an
ex parte application for an injunction as above indicated, or
whether the first application is made to the Court on motion after
notice to the Defendant, the matter will, if an injunction is desired
before the decision of the suit, in either event come up for hearing
in Court on motion ; when both sides will be entitled to be
represented by Counsel and the evidence for and against the
application will be before the Court in the form of affidavits. As
the suit itself may take anything from three months to two years to
be heard, it may be a matter of some importance to the Plaintiff to
obtain an interim injunction on the motion pending the decision in
the suit.
Service of the Notice of Motion.
If the suit is filed in a District Court service of the Notice
of Motion must be effected through the Court in which the suit is
filed in the same manner as the writ of summons in the suit is
required to be served. See Order 48, Rule 2 of the Civil Procedure
Code.
If the suit is filed in a High Court the position is different.
Under Order 49, Rule 1 of the Civil Procedure Code any service
of any Notice of Motion may be effected by the Attorney of the
Applicant.
Service of the Notioe of Motion by registered post.
If the suit is being brought in a District Court, leave to
* That the Court may accept undertakings when making ex parte orders
such as that now under consideration appears from Ch. 20, Rule 2 of the Rules
of the Calcutta High Court.
Ch. xvn]
GROUNDS
719
servo the summons by registered post may be obtained by applica-
tion on a written petition to the judge who will hear the motion.
If the suit is being brought in a High Court, the matter will
be regulated by the Rules of the particular High Court in which the
suit is being brought. In the Calcutta High Court (see Chapter 8,
Rule 24 A) leave to serve the Notice of Motion by registered post may
be obtained from the Master on application with a formal petition
(stamped with a Rs. 12-0-0 stamp). This Petition though it may be
verified on information and belief by an Attorney acting for the
Plaintiff (the only matter of fact to be verified being the locality
of the residence of the Defendant where the notice is proposed to
be sent), yet has to be signed by the Plaintiff. Alternatively, if
preferred, the leave to serve the summons may be obtained usually,
according to the practice of certain Judges, by application made
before the Judge who will hear the motion. It is the practice
however of other Judges not to entertain the application for the
reason that such matters should be disposed of before the Master.
It appears that if the application is made to the Judge, it may be
made in Chambers 10 either by counsel or by an Attorney, and the
practice is that no Petition is necessary and accordingly no stamp
fee required to be paid, and that no affidavit either is necessary.
It appears from the wording of the Rule that the leave to serve
the Notice of Motion by registered post may be obtained also from
the Registrar. The Registrar’s usual practice is however not to
take any but applications which have been listed for disposal before
him and to direct that applications of this nature should be made
before the Master.
In the Bombay High Court under the practice within Chapter
XX of the Rules of that High Court it appears that special leave
to serve by registered post is ordinarily obtained by application to
a Judge in Chambers : with a formal affidavit as grounds. 11
Grounds which should be made out to succeed on an application
for an Interim injunction.
It is proposed next to consider the nature of the grounds
10 This is clear by the use of the word Judge, and uot Court, in Rule 24A
of Chapter 8.
11 As to what is good service of the Notice of Motion by registered post
the position is the same as in regard to the writ of summons in the suit when
that is served by registered post : see page 706 above.
720
THE LAW OP PATENTS IN INDIA
[ch. xvn
which should be shown in the Petition filed on the motion, in order
to be likely to succeed in obtaining an interim injunction such as
will continue pending the hearing of the suit.
Discretion : dependent on the facts.
It must be largely a question of fact dependent on the circums-
tances of every case whether the Court will grant an interim
injunction or not, yet as the matter is one in which the discretion
of the Court may be expected to be exercised judicially, it becomes
of some interest to consider cases where an interim injunction has
been refused and cases where it has been granted.
Plaintiffs patent must be well established.
It is the praotioe of the Courts in England not to grant an
interim injunction except in cases where the Plaintiff can show either
that he has already obtained a certificate of validity questioned or at
least that there has been a well established user over several years
of his patent. This principle has the double merit of being old-
established among the decided cases and of being reasonable. There
is no reason to suppose that the Courts in India would adopt any
different outlook . 12
The Court will not normally grant an interim injunction where
the Defendant denies the validity of the Plaintiff’s patent ; for it is
loth to decide the question of validity on the motion for interim
injunction ; and without coming to the conclusion that a decision
of the question of validity appeared to it to be prima facie at any
rate favourable to the Plaintiff, it would not consider itself in a
position to grant him the interim injunction . 13
Where a certificate of validity questioned has been obtained the
Court will normally grant the interim injunction.
As to Novelty.
It appears to be the practice in England for the Plaintiff to
11 See Smith v Origg Ltd. (1924) 41. R. P. C. 149 at p. 153 ; Trautner v.
Patmore (1912) 29. R. P. C. 60 at p. 63. From the various cases cited in Fleteher-
Moulton in the note at p. 182 where the age of the Patent in each case cited
is given, and from the observations in Terrell (8th edn.) at p. 382 it would appear
that six years is commonly taken as a reasonable age for the Patent in the United
Kingdom to show that it is well established.
11 See Holopham Ltd., O' Cleary and Davit v. O.Berend and Coy. Ltd.
(1898) 15. R. P. 0. 18 at p. 19.
Ch. xvn]
AS TO NOVELTY
721
state in his affidavit facts showing that his invention is novel.
It might have been expected that once the Plaintiff had shown that
he was the patentee, novelty like all other requisites of a valid
patent would be presumed in his favour until proof was given to the
contrary by the Defendant. The wide nature of the search which
is now in every case made at the Patent Office before a patent is
granted would also, it might have been expected, be taken into
consideration by the Court to support such a view. But for some
reason this view does not appear to have found favour in the Courts
in England. With the result, as stated, that in England it is com*
monly considered to be necessary for the Plaintiff on an application
for an interim injunction not only to show that he is the Patentee,
but also to show that his invention is in fact new. And that being
so, it has further become the practice in the United Kingdom that the
Plaintiff must show on his affidavit not only that he believed the
invention new at the date of the grant of Patent but that he does
so at the date of the affidavit ; to ensure that he has not since its
grant acquired knowledge of any anticipation of it. u
Whether the Courts in India will insist on either or both of
these points being positively established by affidavit is difficult to
prophecy. Apart from the precedents of previous decisions in
England, insistence on the Plaintiff making out these points would,
it is submitted be unnecessary. And if he is compelled to establish
the requisite of novelty in his patent why is he not to be compelled
to establish all the other requisites : such as sufficiency and utility
and the rest ? Which he can hardly be expected to do on an appli-
cation for an interim injunction. Moreover if the Court is averse
to trying the question of validity on the motion, why should it enter
at all on the question of novelty, which is merely a subsidiary part
of that question ?
It is submitted that in India where the Court on this point
will be unfettered by any direct previous decisions it may well
take the view that provided the Plaintiff shows he is the patentee,
it is not necessary for him to show positively on his affidavit in the
proceedings for interim injunction that his invention is new.
14 For the English practice see Fletcher Moulton at p. 182. Citiny Hill v.
Thompson (1817) W. P. C. 229 and Sturt % v. Dc La 1 Inc (1822) 5 Russ 322. Hco
also Terrell (8th cdn.) p. 382.
91
722
THE LAW OF PATENTS IN INDIA
[Ch. xvn
A prima facie case of infringement.
It is naturally necessary that in the petition on the motion
for the interim injunction the Plaintiff must show at least a prima
fade case of infringement. It is no doubt preferable that he should
show a strong oase of infringement ; but it has been held that if
he shows a prima fade case of infringement this will do. 1 '
Necessity for the interim injunction.
No matter how good a case the Plaintiff appears to have for
a permanent injunotion or damages in the suit, it would seem that
the Court will not grant any interim injunction unless some neces-
sity is shown for it. Thus where a sufficient undertaking has
already been given by the Defendant, the Court may refuse to grant
any interim injunction. 1 '
In cases where after the institution of the suit a satisfactory
undertaking has been offered by the Defendant but refused, even
if the Court grants an interim injunction it may refuse to give the
Plaintiff the costs of the motion . 17
Delay.
An interim injunction will not be granted where the Plaintiff
has delayed unduly. There have been frequent examples of cases
where an interim injunction has been refused in the United Kingdom
on account of the laches of the Plaintiff . 18
But for reckoning the period of delay prior to the application
it should be shown that the Plaintiff had in fact actual knowledge
of the infringement ; and it may not be enough to state that because
the Defendants had taken out a patent therefore Plaintiff must
have known or ought to have known of the position . 19 And though
a Plaintiff may have known of the intention of a Defendant to
infringe, the Plaintiff will not ordinarily be considered to have
“ See Plimpton v Spiller (1876) 4. Oh. D. 286 C.A.
" See Lyon v Mayor etc. of Newcastle-upon-Tyne (1894) 11. R. P. 0. 218
where the motion was dismissed with costs.
17 See Perry v. Soeiete dee Lunetiers (1896) 13. R. P.0.664 at p.672;
Dunlop Pneumatic Tyre Oo. Ltd. v. Stone (1897) 14. R. P. 0. 263 ; Spaul v.
Monopole Oo. (1906) 23 R. P. 0. 647.
18 See Fletcher Moulton p. 183.
18 See Osmond v. Hirst (1886) 2. R. P. C. 265.
Ch. XVII]
DELAY
723
delayed in reBpeot of any period prior to the date when infringement
waa actually perpetrated . 20
Where there have been a number of infringements it will not
ordinarily be held that any delay of the Plaintiff in proceeding with
one case is justified by his proceeding with another case and
awaiting its results. On the contrary the proper course of a Plaintiff
in such a case, if he has not established his patent is to write to
each infringer asking if they will agree to abide by the decision in
the first case as a decision in their oase ; and if they do not agree
then to institute suits against each of them without delay . 31
On the other hand it is no reason for refusing to grant an
interim injunction that the Plaintiff has been guilty of laohcs in
other cases in not taking proceedings (oriminal or civil) against
other infringers . 22
As an exception to what has been stated above that no delay
will be considered against the Plaintiff prior to actual infringement,
it may be that in a special case where the Plaintiff has stood by and
allowed the Defendant to build special factories, such conduct may
be considered by the Court sufficient reason to refuse to grant an
interim injunction . 23
Where there has been a change of ownership of the Patent, it
has been suggested that laches may be counted “against the owners
irrespective of the change of ownership” : that is to say against the
Plaintiff even though it was not he but his predecessors who wore
guilty of the delay . 24
Balance of convenience.
It has been stated that in England possible inconvenience will
not prevent the Court granting an interim injunction when the
Plaintiff's patent is well established . 25
*• Bee United Telephone Co. v. Equitable Telephone Association (1888)5
R.P.C. 233.
11 See Bovill v. Crate (1865) L. R. 1. Eq. 388 ; North British Rubber Co. v.
Qormully db Jeffery Mnfg. Co. (1894) 12. R.P.0. 17 ; Aktiengesellsckaft fur Cartonn-
agen Industrie v. Tender (1899) 16 R.P.C. 447 ; also Fletcher Moulton p. 183.
** See Pneumatic Tyre Co. Ltd. v. Warrilotc (1896) 13 R.P.C. 284.
** See Fletcher Moulton at p. 183 citing NeUson r. Thompson (1841) W. P.
C. 225.
** See Fletcher Moulton p. 163.
** See Fletcher Moulton p. 184 citing Davenport v. Jepson (1862) 4 De
G.J.&F.440.
724
THE LAW OF PATENTS IN INDIA
[Ch. XVII
It is clear that even in England the Court may consider the
balance of convenience in borderline cases : and may thus consider
that if the Defendant will in all probability be able to pay damages
should he lose the suit, it may be more convenient not to grant an
interim injunction. 24
It is submitted that in India the Court should in all cases
consider the balance of convenience : though having regard to the
fact that even if the Defendant does in the end pay full damages,
this may not be the best remedy for the Plaintiff and that the
capacity of the Defendant to pay damages may be no reason for
denying an interim injunction to the Plaintiff in a proper case.
Conduct and position of the parties.
The Court is also entitled in exercising its discretion to take
into account the conduct and position of the parties. Certain
examples of cases where such special factors have been taken
into consideration, are referred to in Fletcher Moulton at p. 144,
note (g).
Estoppel.
The question of estoppel may arise in connection with the
application for an interim injunction in two different quarters.
In one class of case it may be shown that the Defendant
by reason of bis being a licensee, or assignee, or by reason
of his conduct in some other respect, is estopped from disputing
the validity of the Plaintiff's patent. The consequence of such an
estoppel is then merely that the validity of the patent as between
the parties and in the particular suit in which the application for
interim injunction is being made is taken as established. And
provided the Plaintiff satisfies the other necessary requirements,
the interim injunction asked for by him will be granted. 27
In another class of case it may be shown that the Plaintiff
is estopped by reason of his conduct or by reason of a decision in
previous litigation from making any claim against the Defendant
** See Fletcher Moulton p. 184 citing Newall v. Wilson (1852) 2 De G.M.
& G. 282 ; Brachcr v. Bracher Bean db Oo. (1890) 7 K.P.G. 420.
" See Edmunds pp. 269*272 , Fletcher Moulton p. 244, p. 8.
Ch. XVU]
ACQUIESCENCE
725
for infringement. The consequence of such an estoppel is then that
the injunction asked for must inevitably be refused.
It may be noted that mere delay to enforce a legal right is
no bar to an action unless the delay is such as to cause a statutory
bar ; 28 or unless, it is submitted, the delay is coupled with such
other circumstances, such as misrepresentation by the Plaintiff and
alteration of position by the Defendant, as to amount by reason
of such other circumstances to an estoppel.
For the purpose of preventing the grant of the interim injunc-
tion at the stage when the motion only and not the suit is before
the Court, it will not be necessary for the Defendant to show a
complete estoppel against the Plaintiff since mere acquiescence by
the Plaintiff short of estoppel may be enough to prevent the Court
from granting the interim injunction.
Acquiescence.
An interlocutory injunction may be refused if there has been
on the part of the Plaintiff acquiescence in the wrong of which he
complains. Cases of acquiescence may arise which cannot be put
on the ground of delay : the delay being only reckoned after actual
infringement while the acquiescence may consist of conduct on the
part of the Plaintiff prior to infringement : or complete acquiescence
may have been shown in a short space of time. Cases of acquies-
cence may also arise differing from cases of estoppel proper for
other reasons : thus in a case of estoppel the Plaintiff would find
himself estopped from obtaining either a permanent or an interim
injunction : while a degree of acquiescence which might not debar
a Plaintiff from obtaining a perpetual injunction at the trial might
yet be fatal to his obtaining an interim injunction on the interlocu-
tory proceedings . 29
Interim injunction before actual infringement. Threatened
infringement.
In some cases in practice the question may arise whether
the Plaintiff is entitled to an injunction where the infringement is
imminent but has not as yet been perpetrated. It is true that owing
*® See Three Town Banking Co. v. Maddever (1884) 27. Ch. D. 523 at p, 530.
•• See Edmunds p. 275 citing Neilson v. Thompson (1841) 1 Web. P.C. 278
as the leading case on acquiescence. Also see Fuliwood v. Fulhcood (1878) 9
Ch. D. 176 ; of. Proctor v. Bennis (1887) 36 Ch. D. 740 at p. 758.
726
THE LAW OF PATENTS IN INDIA
[Ch. XVII
to the wide interpretation given to the term “uses the invention” (in
Section 29 of the Indian Act of 1911) many acts are found to be in
law actual infringements which fall short of a sale. Thus there is no
question about importation even without sale : this is user within
Section 29 and therefore amounts to actual infringement. For this
reason cases of intended infringement do not arise in praotice as
often as might at first sight be expeoted. It is however submitted,
that on the general principles governing the issue of injunctions, a
Plaintiff is fully entitled to an injunction even without proving
actual infringement where the Defendant shows an intention to
infringe and claims a right to do an act which will be an infringe-
ment and where it is plain that what is threatened to be done would,
if done, constitute an infringement.* 0 And it is submitted that this
principle is equally applicable to a grant of an interim injunction
on the motion proceedings as to the grant of a permanent injunction
in the suit.
Undertaking as to damages.
In all cases where an interim injunction is granted it is usual
for the Plaintiff to give an undertaking as to damages : that is to
Bay that the Plaintiff will make good to the Defendant any damages
whioh the Defendant may suffer by reason of the injunction having
been issued, if it be shown thereafter that the interim injunction
ought not to have been granted. In such an event an enquiry as
to the amount of such damages may be ordered at a later stage. 31
Other terms. v
The Court may in a proper case impose other terms also upon
the Plaintiff : such as an undertaking to supply the Defendant with
all goods required by him during the continuance of the interim
injunction as was done in the United Telephone Co. v. Tasker
(1888) 5 R.P.C. 628 : or as to payment into Court of profits. 32
*® Bee Frearson v. Loe (1878) 9 Gh. D. 48 at p. 65 per Jessel M. B.
11 See Bothwell v. King (1887) 4. B.P.G. 76.
" See Fletcher Moulton p. 185 citing Neilson's Patent (1841) W.P.G. 273,
286 : and see Briggs d> Co. v. Lardeur (1884) 1 B.P.C. 192 (C.A.) ; Edison Bell
Phonograph Corpn. Ltd. v. Hough (1894) 11 B.P.G. 694 ; North British Rubber
Co. v. Oormully d> Jeffreys (1894) 12 B. P. G. 21 ; Pneumatic Tyre Co. Ltd. v.
Goodman d> Son. (1896) 13 B. P. G. 723 at p. 724 ; Spencer ▼. Holt (1903) 20
B.P.0. 142.
Ch. XVU]
UNDERTAKING TO KEEP ACCOUNTS
727
Alternative order : undertaking by Defendant to keep accounts.
The motion for the interim injunction is in very many cases
disposed of by a compromise ; the Defendant undertaking to keep
accounts of the sales of the articles complained of. In such event
the order which is passed with the consent of both parties is merely
to this effect : —
“on the Defendant’s undertaking to keep accounts of the sales •
of the articles complained of in the Plaint, no order is made on
the motion except that the costs of the motion shall be costs in the
cause.”
Such an order by enabling profits or damages to be reckoned
without further trouble or expense will meet the case in many
instances. Where there turns out to be any real dispute about
the merits of the suit this is often the utmost that a Plaintiff may
expect to obtain as a result of the application for an interim
injunction.
Costs.
It is seldom if ever that the Plaintiff will be given the costs
of the motion then and there. Though it is possible to imagiuo a
case where the circumstances will bo such as to lead the Court to
make such an order . 33
If the Plaintiff is successful on the motion, the usual order
is for the costs of the motion to be costs in the cause.
If tho interim injunction is refused, the motion may be dis-
missed with costs (which means that the Plaintiff pays the costs
of the Defendant in respect of the motion in any event whatever
be the result of the suit). This is usually done if the reason for the
refusal is conclusive and independent of tho question to bo tried
in the suit ; as for the delay of the Plaintiff. Or tho motion may
be dismissed without any order as to costs (which means that eaoh
party pays its own costs of the motion in any event). This is some-
times done where the matter is a borderline case ; or where there
is a good deal to be said for both sides. Or the costs of tho motion
may be ordered to be costs in the cause. This is often done where
there appear to be substantial questions in issue in the suit ; and
*• This appears to have been done in Hayward y. Pavement IAyht Co.
(1884) 1 R.P.C. 207.
728 THE LAW OF PATENTS IN INDIA fCh. XVH
when the interim injunction is refused for that reason. In excep-
tional cases the costs of the motion may be reserved.
Compromise of the suit with the motion.
It often happens, the whole dispute between the parties having
been agitated in the pleadings of the suit and during the oourse of
the preparation of the affidavits for the motion, that the parties in
process of coming to terms on the motion have for all practical
purposes disposed also of all the questions which will arise in the
suit. In such a case it is possible to anticipate the ordinary pro-
cedure and to settle the suit at the same time as the motion. On
the motion being called on in Court the matter is mentioned to the
Court. The sanction of the Court is obtained to settle the suit
with the motion. Tho Judge then gives directions to the Court
Officer to treat the suit as placed in the list of suits to be heard
that day. And the terms of settlement are either put in in writing
signed by Counsel on both sides (which is usually the more satis-
factory method) or orally stated by Counsel to the Court and
recorded by the Court Officer in the minutes of the Court. And
the Judge then and there passes a consent decree in the suit and
motion in accordance with the terms of settlement.
3. Appearance in the suit.
The procedure required to be followed by the Defendant in
order to make an appearance in the suit is regulated, if the suit is
being brought in a District Court, by Order 9 (Rule 1 and the
following rules) of the Civil Procedure Code. Thereby the Defen-
dant is required to appear in Court either in person or by his
pleader (duly instructed) when the suit is called on for hearing.
There is no provision for his appearance being entered in writing
before that, as in a High Court.
If the suit is being brought in a High Court the matter is
further regulated by the Rules of the particular High Court. In
Calcutta it is provided in particular by Rule 15 of Chapter VIII
of the Rules of the Calcutta High Court that a Defendant shall
enter appearance on certain specified Forms which he may file with
an officer of the Court at any time before the final date fixed, the
wording of the Rule being as follows : —
“15. A defendant shall enter his appearance to a writ of
Oh. xva]
APPEARANCE IN THE SUIT
729
summons by filing with the proper officer in the office
of the Registrar, on or before the day fixed for his
appearance in the writ, a memorandum in writing dated
on the day of its delivery and containing the name and
place of business of the defendant’s attorney, or stating
that the defendant defends in person and containing
his name and place of residence. (Forms Nos. 4
and 5).”
Other matters concerning the entering of appearance and the effect
thereof and the effect of failure to do so within the time allowed
are also regulated in Chapter VIII of the Rules of that High Court.
In Bombay the procedure which must be followed by the
Defendant in order to enter appearance in the suit is laid down in
Chapter VII of the Rules of that High Court, in particular under
Rule 117 as follows : —
“117. The defendant shall, on or before the day fixed in the
writ of summons for the filing of his written statement,
if such be called for, or otherwise before the date fixed
for his appearance, file with the Prothonotary and
Senior Master an appearance ; in defanlt of this the
suit will be set down as undefended. Should the defen-
dant then appear and desire to defend, the suit shall be
subject to transfer to the defended list, or to postpone-
ment, with costs not exceeding Rs. 50/- to be paid by
snch defendant to the plaintiff.”
4. The remaining pleadings — The Written Statement.
If the suit is being brought in a District Court the procedure
relating to the filing of the Written Statement is regulated by the
Civil Procedure Code only. Unless ordered to do so, there is no
provision in the Code making it incumbent on the Defendant to
file a Written Statement : accordingly unless he has been ordered
by the Court to file a Written Statement, no consequences follow
on his not doing so. In the absence of a special order there is no
time within which any written statement, if filed, is required to bo
filed. Order 8, Rule 1 of the Civil Procedure Code being merely as
follows : —
“1. The defendant may, and, if so required by the Court,
92
730
THE LAW OF PATENTS IN INDIA
(Ch. XVII
shall, at or before the first hearing or within such time
as the Court may permit, present a written statement of
his defence.”
But under Buie 9 of Order 8 the Court may at any time require
a written statement from the Defendant and fix a time for present*
ing the same.
The common practice is for the writ of summons to be issued
as a summons calling on the Defendant to appear “for settlement
of issues” only (except in simple cases) 34 . A date is inserted in the
writ of summons which will give the Defendant time to appear
on the date stated for this purpose. The Judge then . on that date
orders a written statement to be filed and fixes a date for that pur*
pose. The practical result is that the Writ of Summons in suits
filed in a District Court is in effect a summons to appear for
directions. If there has been an order made for the Defendant to
file a Written Statement by a fixed time, then Buie 10 comes into
operation which is as follows : —
“ 10. Where any party from whom a written statement is so
required fails to present the same within the time fixed
by the Court, the Court may pronounce judgment
against him, or make Buoh order in relation to the suit
as it thinks fit.”
If the suit is being brought in a High Court, then the proce-
dure require^ to be followed by a Defendant in regard to the filing
of his written statement is regulated by the Buies of the particular
High Court in which the suit is filed.
In the Calcutta High Court if the suit is an ordinary suit and
not marked as a commercial cause, the time for filing the written
statement is the time stated in the writ of summons to be calculated
from the date of service thereof. The period of time which is in
practice allowed varies according to the distance of the plaoe where
the writ of summons is to be served. The form of the writ of
summons in use in the High Court of Calcutta is shown in the
Buies and Orders of the Calcutta High Court (3rd edn.) at p. 513 ;
which will be seen to contain a marginal note as follows : —
“The defendant (name) (is) required by the Court to file (his)
#+ Sec Civil Procedure Code Order 5, Rules 5 & 6.
Ch. XVII]
THE WRITTEN STATEMENT
731
written statement within (blank) days from the service
upon (him) of his writ.”
It will also be seen to contain at the end a note to the following
effect : —
“Note 2. The written statement called for must be filed
within the time limited, the defendant having first entered
an appearance. In default thereof, the suit will be liable
to be heard ex parte.”
The actual period of time allowed and notified in the writ of
summons for filing the written statement according to the practice
of the Calcutta High Court varies in different classes of case from
14 days to 63 days. By Chapter VII, Buie 4 of the Rules of that
High Court it is provided to the effect that the Registrar may fix
the time having regard to the residence of the defendant or defen-
dants as given in the plaint. Actually a table of times has been
framed by the Registrar which is shown on page 199 of the Rules
& Orders of the Calcutta High Court (3rd edn.) : to which reference
may be made as necessary. If the Defendant has not filed his
Written Statement within the time allowed him, the Plaintiff may
make an application to the Judge in chambers for an order that the
suit shall be transferred to the peremptory list of undefended suits :
under Rule 3 of Chapter IX of the Rules of that High Court.
If the suit having been filed in the Calcutta High Court is
marked as a Commercial Cause, the period in which the Defendant
is required to file his written statement reckoning from the date of
service of the summons is 14 days in every case ; and notification
of this is given in the writ of summons (see note in Rules & Orders
(3rd edn.) page 198). If 21 days have elapsed after appearance has
been entered and no written statement has been filed in a commercial
suit, the suit is listed in the List of Suits for Directions and comes
up in Chambers before the Judge for directions to be given. On
that occasion both parties may be represented in Court, usually by
their Attorneys ; and among other necessary directions the Judge
will usually fix a period within which the written statement is to
be filed ; and may in a proper case order that in default of its being
so filed within the time ordered the suit is to be transferred to the
undefended list. If the Defendant has reason to want a specially
long period in which to file his written statement, either for the
732
THE LAW OF PATENTS IN INDIA
[Ch. xvn
reason that his Client is abroad or any other reason, he may inform
the Judge on that occasion and if the Judge thinks fit the Judge
will direct a specially long period for that purpose.
In a Commercial Suit if the time ordered for filing the written
statement has elapsed and it has not been filed, the Plaintiff may
apply to have the suit placed again in the list for directions and
then apply for having it transferred to the undefended list.
Whether the suit has been marked as a commercial suit or is
being heard as an ordinary suit, if the defendant has good reason
to be unable to file his written statement within the proper time, his
attorney may write to the Plaintiff’s attorney and explain the posi-
tion and ask him to agree not to take any steps for compelling the
filing of the written statement or for having the suit placed on the
undefended list. In any genuine case there will be no point in the
Attorney for the Plaintiff refusing to agree to this. Such an arrange-
ment is commonly come to for mutual convenience for the purpose
of saving the costs of an unnecessary application on one side or the
other.
In the case of a suit filed in the Bombay High Court, the time
allowed to the Defendant to file his written statement is similarly
fixed in the Writ of Summons as mentioned in Rule 114 of that
High Court which is as follows : —
“114. When a written statement shall be called for by the
Judge from a defendant in the first instance notice to that
effect shall be given in the margin of the writ of summons
calling on the defendant within four weeks from the
service thereof (unless the Judge shall otherwise order) to
file his written statement and serve a copy thereof on the
plaintiff or his Attorney”.
If the suit is in the Bombay High Court transferred to a list of
Commercial Suits, the time for the delivery of points of defence
(which in a commercial suit there takes the place of a Written
Statement) will be fixed by the Judge at the time the suit comes up
for directions : under Rule 203 of that High Court.
Contents of the Written Statement
As to defences : —
The various defences which may be open to a defendant in a
suit for infringement have been previously sufficiently discussed in
dr. XV*) NO COUNTER-CLAIM FOR REVOCATION 733
Chapters XIV, XV & XVI and it is not necessary here to go into
them in detail.
As to particulars of objections : —
The position in India as to whether or not the practice of
delivering with the written statement a separate statement entitled
“Particulars of Objections”, which is the normal English practice
in patent cases, should be adopted or not, stands on the same footing
as the similar question already discussed in regard to Particulars
of Breaches in connection with the Plaint.
It is submitted that it would be convenient if this procedure
were to be universally adopted in patent suits in India and thcro is
nothing in the Civil Procedure Code which militates against it.
In any event the Defendant should give full and proper
particulars of objections either in the form of Particulars of
Objections or in the Plaint itsolf from which the Plaintiff may know
precisely what case of invalidity he will be called upon to meet.
As to a counter-claim for revocation in the Written State-
ment : —
In view of the provisions of Section 29(2) of the Indian Act
of 1911 to the effect that “every ground on which a patent may be
revoked under this Act shall be available by way of defence to a
suit for infringement” it is abundantly clear that the question of
the validity or invalidity of the Plaintiff’s patent may be made a
direct issue in the infringement suit. This will be so no matter
whether the suit is being heard in a District Court or a High Court.
Since an infringement suit may be heard by any District Court
while a petition for revocation can only be heard by a High Court
(contrast Section 29(1) with Section 26(1) of the Indian Act), it is
clear that there could be no counter-claim for revocation of the
Plaintiff’s patent in a written statement of a suit for infringement
being heard by a District Court which was not a High Court.
The question arises whether in an infringement suit filed by a
Plaintiff in a High Court it will be open to the Defendant not
merely to take by way of defence the plea that the Plaintiff’s Patent
is invalid, but, on the basis of such a plea of invalidity, to counter*
claim for an order for revocation of the Patent in the suit.
734
THE LAW OF PATENTS IN INDIA
[Ch. xvn
It should be noted that while cases in which a Defendant has
successfully counter-claimed for an order for revocation in an
infringement suit are common in England, such right so to counter-
claim for revocation is given to the Defendant under Seotion 32
of the English Patents & Designs Act ; and arises solely out of
that section. That this is so was clearly stated by Atkin L. J. (as he
then was) in British Thomson- Houston Co. Ltd. v. British Insulated
Helsby Cables Ltd.* 6
There is no corresponding section in the Indian Patents <&
Designs Act of 1911 or any section in the Indian Act which refers
at all to such a counterclaim for revocation.
Moreover the Civil Procedure Code by which the general
procedure in oivil suits throughout British India is regulated, does
not provide for or at all contemplate any such counterclaim being
made in any civil suit. It is for this reason that in India the
common practice, where the Defendant has a cross-claim against
the Plaintiff, is for a cross suit to be filed. Where convenient, such
cross suits being consolidated, or the evidence in one being treated
as evidence in the other. It would seem probable that any reference
to a counter-claim was purposely omitted by the framers of the
Indian Act to prevent disconformity with the general practice and
rules of procedure in oivil suits in India.
This view acquires added weight when it is noted that the
Section in the English Patents and Designs Act which creates the
right to counterclaim for revocation only gives the Defendant in
England the right to “apply in accordance with the (English) rules
of the (English) Supreme Court by way of counter-claim/ 1 It would
be natural therefore for the framers of the Act in India, where
counterclaims do not ordinarily exist, to refrain from creating in this
unique instanoo under the Indian Patents and Designs Aot any
special right to counterclaim for revocation. Particularly does this
seem likely to be so also, when it is also remembered that an order
for revocation, if obtained, amounts to a judgment in rem which will
create rights against all the world and not merely between the Defen-
dant and the Plaintiff.
In view of these considerations it i s submitted that it is clear
that in British India it is not open to a Defendant in his W ritten
” (1924) 41. B. P. 0. 345 at p. 415 and see p. 464 above!
ch. xvn]
FURTHER PARTICULARS
736
Statement to counter-claim for an order for revooation ; and that a
Court in British India in a suit for the infringement of a Patent has
no power to make an order in favour of a Defendant for the revoca-
tion of the Plaintiff's Patent.
There appears to have been no direct decision in any Indian
case on the point. It is true that in a very recent case in the Patna
High Court heard before Sir Courtney Terrell C. J. and Jwala
Prosad J., such an order for the revocation of the Plaintiff’s Patent
was made, no doubt following the English practioe with which
the learned Chief Justice would naturally be familiar. And it is truo
that the decision of the Patna High Court was subsequently con-
firmed on appeal before their Lordships of the Privy Council. But
it seems that at no stage of the case was any objection made to tho
counterclaim by the Defendant for revocation and at no stage was
the point whether it was open under the Indian Patents <& Designs
Act for such an order to bo made, argued or even referred to. It is
submitted therefore that the formal confirmation by their Lordships
of the Privy Council of the order for revocation as an incidental
part of the judgment of the Patna High Court, against whioh the
appeal came up for their consideration and decision on completely
different points, cannot be taken as any decision of the point now
under consideration : since this point was actually never raised or
argued or even referred to before their Lordships of the Privy
Council.
Written Statement by Plaintiff in Reply.
Unless the Defendant takes the point in his written statement
that the Plaintiff’s Patent is invalid, no question of a reply on the
part of the Plaintiff will probably arise.
If the Defendant does raise the plea of invalidity, it may be
advisable for the Plaintiff to file a reply in the form of a Plaintiff’s
Written Statement.
5. Further and better particulars.
If either the Plaintiff or the Defendant fails to give sufficient
and proper particulars in his pleading, the other party may, as in
any ordinary suit, make an application for further and better
particulars. The proper practice is for the Attorney of the party
736
THE LAW OF PATENTS IN INDIA
[Ob. XVH
desiring such further particulars first to “write a letter demanding
that they be furnished and Btating clearly and concisely in numbered
paragraphs precisely the nature of the different particulars
required. If the other party in fact has not furnished sufficiently
complete particulars in his pleading, or even if there be room for any
doubt upon the question whether the first party is entitled to the
particulars or not, in most cases, unless there is some good objection,
the party asked will be well advised to furnish the required
particulars at once by letter. Otherwise, in some cases, especially
where the two cases of the two parties consist of conflicting
allegations of fact, if it can be said at the hearing that the one party,
though asked at an early stage for particulars about his case, was
unable to give any, this may be used in argument against the credibi-
lity of his case. In any event by furnishing the particulars thus by
letter, the party avoids all risk of being ordered to pay for the costs
of an application which the other party would otherwise find it
necessary to make ; and which if particulars were ordered, would in
most cases be ordered to be paid by the party then ordered to furnish
them : more especially if he had previously refused to do so by letter.
Since the costs of such an application may well amount to about
Rs. 500, this may be an appreciable point to be considered.
6. Notice to admit facts and documents : an admitted Brief of
Correspondence.
A Notice to Admit Documents or a Notice to Admit Facts or
both may be sent by letter to the other side in a Patent suit just as in
any other suit : the procedure as to this being that laid down in
Rules 2-5 of Order 12 of the Civil Procedure Oodc. It is to some
a matter of regret that the Courts in India do not more often
penalise a party in costs who has protracted a hearing by reason of
liia failure to admit clear facts when called upon by such a notice.
There is no doubt that the hearing of many suits might be
considerably shortened and the costs to the litigants thereby
diminished if this power was more widely used.
In every patent suit, if possible, arrangements should bo made
between the Attorneys on both sides so that a Brief of Correspondence
containing copies of every material document which may be required
at the hearing by both sides or either of them, should be prepared,
and that the documents of which copies are contained in such Brief
Ch. XVII]
AMENDMENT OF PLEADINGS
737
of Correspondence should have been admitted between the parties
before the hearing. Failure to agree such a Brief of Correspondence
causes much unnecessary inconvenience to all parties and to the
learned judge hearing the case, and loss of time and consequently
increased costs.
In any event the lack of any collected typed brief of
correspondence to which the judge can refer without interruption,
while original letters or papers may be being handed to the witness
for perusal or proof or to the court clerk for being marked as an
exhibit or otherwise handed about and confused in order, must bo
so great an inconvenience for the learned Judge as appreciably to
increase for him the difficulty of adjudicating in any case where such
a brief is not afforded for his use. If the other side therefore should
refuse or fail to consent to the use of a proper or complete brief of
correspondence as an agreed and admitted brief, it will in all cases
be advisable for the Plaintiff to collect in one brief, arranged in
proper chronological order, copies of all documents upon which lie
at least wishes to rely for his part and which he intends to prove at
the hearing ; this brief may then be handed to the Judge at the
beginning of the hearing, it being understood that none of the
documents of which copies are contained in the brief can be used as
evidence until proved or specifically admitted. The documents
proved may be noted with their exhibit number as proved. By the
end of the hearing at least in this way it will be ensured that the
Judge will, have for his own use an orderly brief containing copies
of all such documents as will by then have been proved and
exhibited.
7. Amendment of Pleadings.
Circumstances may arise beforo or at the hearing which will
induce one side or the other to make an application to amend its
pleadings. It is unnecessary in the main here to say more than that
all matters arising in connection with such an application to amend
pleadings in a suit for infringement of patent arc dealt with in the
same manner and under the same rules of procedure as in any other
suit.
Appeal.
An order of a Judge granting or refusing an amendment of
pleadings ordinarily is not appealable as a judgment under Clause 15
93
738 THE LAW OF PATENTS IN INDIA [Ch. XVII
of the Letters Patent of the Calcutta, Bombay or Madras High
Courts of 1865. Nor is it appealable under Section 104 or Order
43 of the Civil Procedure Code. Thus it is not appealable at all.
Save possibly in an exceptional instance where it might be shown to
be of so far-reaching and final a character as to amount to a judg-
ment under Clause 15.
Amendment of particulars of breaches or of particulars of
objections.
This is in effect an amendment of the pleadings in the suit. It is
therefore clear that an amendment of such particulars should only be
feasible with leave of the Court : on application in the same way as
by application to amend pleadings. To take any other view might
mean that a party might be completely taken by surprise and might
mean giving the amending party the power to set up an entirely new
case as of right.
Under Order 53A, Rule 17 of the English rules it is expressly
provided as follows : —
“Particulars of breaches and particulars of objections may
from time to time be amended by leave of the Court upon
such terms as may be just.”
For the English practice in regard to amendments under that
Rule, reference may be made to Terrell (8th Edn.) p. 410. There is
no such express provision in India, but as there is also no general
provision at all for particulars of breaches or particulars of objec-
tions, these it is submitted, if filed with the Plaint for convenience as
a separate statement, will nevertheless need to be treated when a
question of amendment arises, as a part of the pleading itself.
N. B. As to amendment of the Specification .’—Instances will
frequently occur in Patent suits, where the patentee may desire to
effect an amendment of his specification, it may be so as to elimi-
nate some objection of invalidity, after the suit has been filed. This
matter, which of course has no direct connection with the question of
amendment of the pleadings in the suit, has been already sufficiently
dealt with in Chapter XIV *
»* See pages 490 and 494.
Ch. XVII] OBTAINING DIRECTIONS 730
8. Obtaining direetions : generally.
The inherent nature of a patent suit makes it desirable
that the parties should be able to obtain special directions
relating to the mode and conduct of the hearing. Certain
directions whioh may be obtained even in ordinary suits are
found even more requisite in patent suits : while it has been
found by experience that certain other directions whioh go beyond
any directions whioh may be had or are desirable in ordinary
suits may be requisite for the proper and expeditious hearing
of a Patent suit.
It is no doubt owing to the urgent necessity in practice
of having available an effective system of enabling such special
directions to bo given, that Order 53A, Buie 2IA, of the
Rules of the Supreme Court in England has been framed in
the cogent and comprehensive terms in which it now exists.
That is as follows : —
“(1) The Plaintiff in an action for infringement of a
patent so soon as he becomes entitled to give notice
of trial shall, and the defendant in such an action
if the plaintiff makes default under this Rule for
fourteen days may, apply under Rule 1 (c) or Rule
5 of Order XXX for directions as to the mode of
trial. Such application may be dealt with in
chambers or in Court as the Judge shall think fit.
Upon any such application such directions for the
delivery of further pleadings or particulars, or
statements in the nature of further pleadings or
particulars, and for the making of experiments,
tests, or inspections for the purposes of the trial
and for obtaining reports and for the hearing of any
preliminary question that may arise and otherwise
may be given as the Court or the Judge shall think
necessary or expedient for the purposes of (a) deter-
mining any question of construction which may
arise on the specification, (b) defining limiting or
directing the issues of fact to be tried, (c) res-
tricting the number of witnesses to be called at the
trial on any particular issue, and (d) otherwise
740
THE LAW OF PATENTS IN INDIA
[Ch. xvn
securing that the trial shall be conducted consistently
with adequate hearing in the most expeditious
manner. No action for infringement of a patent
shall be set down for trial unless and until an appli-
cation under this Rule has been made .and
disposed of".
The Rule is within the powers given under Section 34 of
the English Patents and Designs Act 1907-1932, the material
parts of which for present purposes are as follows : —
“In an action for infringement of a patent, the Court
may on the application of either party make such
order for an inspection and impose such terms and give
such directions respecting the same and the proceedings
thereon as the Court may sec fit”.
Powers equally as wide as those of the English Section 34 arc
expressly given to the Court in India under Section 31 of the Indian
Act of 1911 which reads as follows : —
“31, In a suit for infringement of a patent, the Court may,
on the application of either party, make such order for an
injunction, inspection or account, and impose such terms
and give such directions respecting the same and the
proceedings thereon, as the Court may see fit.”
There is however no specific rule similar to the English Rule
(Order 53 A yR. 21 A) above quoted laying down any procedure by
which the directions referred to in Section 31 are to be obtained. J7
In many cases it will be found to be only by the giving of
special directions possible to effect an expeditious hearing ; and to
prevent a protracted inquiry into all sorts of unnecessary questions
• t It is submitted that it would not only clear up any possible ambiguity as
to the extent of the Court's powers in India to give directions of the special nature
usually given in Patent suits in England if a rule similar to the English Rule 21 A
were formulated either as an addition to the Code of Civil Procedure or as an
addition to the Rules of the Calcutta, Bombay, and Madras High Courts res-
pectively, but by making it compulsory to obtain directions, this would also assist
considerably towards the elimination of a considerable portion of the excessive
delay and high costs which will be almost inevitable if Patent suits are allowed
to come up for hearing in India without the question of directions having been
considered beforehand.
Ch. xvn] DISCOVERY AND INSPECTION OF DOCUMENTS
741
with ramifications into multifarious unnecessary matters at the
time of the actual hearing.
Under present procedure in India there is no provision for
the case to como up for directions before the h oaring, unless the
suit is being brought in a High Court and has been marked as a
Commercial Cause under the Rules of the High Court. 38
It appears clear however from the wide terms of Section 31 of
the Indian Act, that, even in suits instituted in District Courts and
in suits in a High Court not specially marked as Commercial causosi
any requisite directions of the nature of those hereafter considered
may be obtained by making an application in Chambers ; and that
the Court under Section 31 has ample power to give such directions
when asked to do so.
It is proposed next to consider the nature of various directions
which it may be advisable in certain cases for the parties to obtain
in a Patent suit. Many of such directions could be obtained at one
and the same time on a single chamber application, in order to save
costs, (reasonable forethought being exercised sufficiently early
before the hearing of the suit as to what directions would be actually
required). For the sake of convenience of reference only however
each of the various directions discussed are here dealt with
separately, as if a single direction only were required, in a separate
single application.
9. Application for discovery and inspection of documents.
If the suit is brought in a District Court other than a High
Court, the matter of discovery atid inspection of documents is regu-
lated by the general rules contained in the Civil Procedure Code
Order ^11, Rules 12 & 13. If an affidavit of documents is required
from the other side it is then necessary in every case for an applica-
tion to be made to the Court for the requisite order. Without a
special order there will then be no discovery or inspection of
documents.
If the suit is brought in a High Court, the position is the same
unless the suit has been marked as a Commercial Cause.
If the suit is brought in a High Court and has been marked as a
Commercial Cause then the matter is further regulated by the Rules
• H
See further below.
742 THE LAW OF PATENTS IN INDIA [Ch. XVH
for Commercial Saits in the particular High Court in which the suit
has been filed.
In the Calcutta High Court in every case whioh is marked as
a "Commercial Suit” an affidavit of documents is required to be
furnished by each side as a matter of course, without any special
order, within 14 days from the written statement : under Chap. XU
Buie 2c of the Buies and Orders of that High Court which is as
follows : —
"In all commercial suits affidavits of documents shall be filed
by all the parties within 14 days from the filing of their
respective Written Statements and in the case of the
Plaintiff, from the filing of the first Written Statement.”
In the Bombay High Court while there are no mandatory pro-
visions in the rules which make it compulsory for the parties on each
side to file an affidavit of documents, the provisions contained in
Chapter XII of the Buies and in particular in Buie 203 give con-
venient power for all necessary orders for lists of documents and
inspection to be passed by the Court at the time when the suit
comes up for directions on the application for transfer of the suit to
the list of commercial causes.
Peculiar importance of the matter in Patent suits.
In a patent suit it may be of more than ordinary importance to
suocess in the suit to obtain discovery and inspection of important
documents aqd accounts of the other party. On the other hand in a
Patent suit also it will be equally true from the inherent nature of
such a suit, that being compelled prematurely or unnecessarily to
give discovery and inspection to a competitor in business may cause
more than ordinary loss and damage. The question whether in a
particular oase discovery and inspection of certain accounts or docu-
ments should be compelled or refused, assumes therefore in Patent
suits more than ordinary importance.
Time for discovery.
It is no doubt for this reason that a practice has grown up in
England in patent cases for discovery of documents relating to
infringements in general to be postponed until after the Plaintiff
has obtained a decree and the question of account of profits or
damages has to be gone into. Discovery of suoh documents however
Ch. XVII]
WHAT DOCUMENTS TO BE DISCLOSED
743
aa relate to the specific infringements referred to in the Plaintiffs
particulars of breaches are required to be disclosed before the
hearing in the ordinary manner for documents relevant to the suit.
It is not usual for any order for discovery, that is for the
filing of an affidavit of documents, to be made until after the
Written Statement has been filed and the pleadings completed, so
that it will have become apparent what are the issues in the suit.
Until then it will not be wholly possible for either party, who will
file the affidavit, to be in a position to say what documents are and
what are not relevant. For this reason, where either party wishes to
allege a fact particulars of which are known to the other side and
not to him, as when a plaintiff wishes to allege various aots of
infringement of which he docs not know full particulars, or a
Defendant wishes to allege prior user by the Plaintiff himself of
which he does not know full particulars, the party must plead the
fact generally and state that he will give further particulars after
discovery.
What documents are to be disclosed in the affidavit of documents.
Although the broad issue of the infringement of tho Plaintiff’s
patent may be put generally in issue on the pleadings, the Plaintiff
will not be entitled to force the Defendant to disclose all documents
which might relate generally to that broad issue ; since the Plaintiff
is required to narrow that broad issue down by the particulars of
breaches ; and the Plaintiff will only be entitled to have disclosed
to him the documents which relate directly to the particular acts of
infringements relied on by the Plaintiff.
Similarly although the broad issue of the validity of the
Plaintiff’s patent be put generally in issue on the pleadings, the
Defendant will not be entitled to force the Plaintiff to disclose all
documents which might relate generally to that broad issue ; since,
the Defendant is required to narrow that issue down by the
particulars of objections ; and the Defendant will only be entitled
to have disclosed to him the documents which relate directly to the
particular grounds relied on by the Defendant . 39
* • See Edison db Swan United Electric Light Go. v. Holland (1888) 5. B. P. C.
213 ; Avery Ltd. v. Ashworth Son db Co. Ltd. (1915) 32. B. P. C. 463 at p. 560 and
33 B.P.G. 235 (C. A.); and Aktiengesellsehaft fur Autogene Aluminium
Schweissung v. London Aluminium Co. Ltd. (1919) 36. B. P. C. 199.
744 THE LAW OF PATENTS IN INDIA [Ch. XVII
Owing to the comparatively small volume of Patent business
and litigation which there has hitherto been in India, there are
no reported Indian decisions of patent casos on this matter which
are of assistance in formulating what should be and what should not
be compelled to be disclosed ; it becomes of interest therefore to
refer to the English practice and decisions on the subject. In this
connection reference may be made to the authoritative statement of
the law in Fletcher Moulton on Patents (1913) edition at p. 177 as
follows : —
“The general practice in patent actions is to defer discovery
relating to infringements, other than those specifically
mentioned in the particulars of breaches, till after the
Plaintiff has obtained judgment. If the defendant alleges
that he is working under a secret process discovery before
trial tending to disclose this process will probably bo
refused, but documents relating to such process should bo
included in the affidavit and an objection made to produce
them on the ground of the injury such production would
cause.
Documents relating to former actions on the same patent,
or to a petition to revoke the patent, arc usually relevant
and must be included in the affidavit, though, if they were
brought into existence merely for the purpose of a
communication to the solicitor in the former action, they
may^be privileged. There is no privilege attaching to com-
munications to a patent agent unless these are privileged
on other grounds, and where the solicitor to a party is
also a patent agent he should- state that the communications
for which privilege is claimed were made to him as
solicitor. Where documents in a defendant’s possession
. relate merely to prior user they are part of his case and '
need not be disclosed.”
10. Application for inspection of apparatus.
Where the question is one of the degree and nature of the
similarity or difference in two processes or machines it may often bo
a matter of the greatest importance for the one side to have
inspection of the actual process or machine of the other side before
the hearing. Even relative documents, drawings, and correspondence
Ch, XVII] INSPECTION OF APPARATUS 745
referring to or describing the prooess or machine, and even
interrogatories, however carefully framed and however frankly
answered, will be but a poor substitute for a view by the eye. In a
passing-off suit, more often than not, the passing-off complained of
relates to a label or an inscription which is by its nature in essence
a document in itself ; and therefore the necessary inspection will
be obtained as a result of the ordinary process of obtaining an
affidavit of documents and inspection of documents. In a patent
suit however, the position may be entirely different ; nothing short
of an inspection of the works or process or machine itself will be of
any use, and the question is how and when a special order for this
is to be obtained before the hearing.
In England in addition to the general provisions of Section
34 of the English Patents & Designs Act 1907-1932, it is directly
provided by Order 53A Rule, 21A of the Rules of the Supreme
Court that upon an application for directions under that rule such
directions “for the making of experiments, tests or inspections for
the purposes of the trial and for obtaining reports and otherwise
may be given as the Court or the Judge shall think necessary or
expedient for the purposes of (a) determining any question of
construction which may ariso on the specification, (b) defining,
limiting or directing the issues of fact to be tried, (c) restricting the
number of witnesses to be called at the trial on any particular issue,
and (d) otherwise securing that the trial shall be conducted
consistently with adequate hearing in the most expeditious
manner The practice in England as to such applications for
directions has already been referred to.
There are also in England the general provisions contained in
Order 50, Rule 3 & Order 30, Rule 2 of the English Rules of the
Supreme Court concerning inspection of apparatus.
In India there iB a provision in general terms giving power to
a Court to order inspection : this is contained in Section 31 of the
Indian Act of 1911 as follows : —
“In a suit for infringement of a patent the Court may, on the
application of either party, make such order for an
inspection and impose such terms and give such
directions respecting the same and the proceedings there-
on, as the Court may see fit”.
94
746
THE LAW OF PATENTS IN INDIA
[Ch. XVII
It is clear from the similarity of the wording that Section 31 of
the Indian Act is based on Section 34 of the English Aot which is
the seotion which creates the power for the Court to order an inspec-
tion of apparatusi for which the English Rule 21A above mentioned
formulates the details of procedure to be followed in England. In
India there is no special rule (either of the Civil Procedure Code or of
the High Court Rules of the Calcutta, Bombay or Madras High Courts)
corresponding to that rule. It is clear none the less that a Court in
India hearing an infringement suit has as wide powers to make an
order for inspection of apparatus by the parties before the hearing
as the Court in England. Where the suit has come up for direotionB
either as a Patent suit, following the suggested practice, or through
being marked as a commercial cause, if in a High Court, such an
application may, no doubt, be made on the suit coming into the list
for directions, and the requisite order be obtained among the other
directions required. If the suit has not come up for directions, it
will be necessary for an application to be made in Chambers for an
order for the requisite inspection of apparatus before the hearing.
The applicant must show that the inspection asked for is essen-
tial to his case ; it will be advisable also for him to show a prima
facie case in his favour on the merits, for as an order for inspection
of a man’s apparatus or works may cause him considerable incon-
venience or even loss, the Court will not be likely to make it against
one person in favour of another who does not appear to have a good
case. \.
In England, where the Court has considered this desirable,
orders have been made in infringement suits for mutual inspection
by both the parties respectively of the apparatus of the other side
before the hearing ; that is to say an inspection of both the patented
apparatus of the Plaintiff and the apparatus of the Defendant which
is alleged to be the infringement ; and orders made for the party
having such inspection to see the apparatus working and to allow
him to take samples of the work done by the apparatus in his
presence.
To avoid undue disclosure of trade secrets to competitors, a
practice has in several cases been adopted by the Court of not allow-
ing an inspection by the parties themselves to the suit, but instead,
directing that the inspection is to be made by scientific experts only
Ch. XVII] IN THE CASE OF A SECRET PROCESS 747
(exolading the parties to the suit), and making it a condition of the
order for inspection, that the experts are directed to keep to them*
selves any secrets which they may discover whioh are not relovant to
the matters in issue in the suit.
Thus in a recent case, Coloured Asphalte Company Ltd. v.
British Asphalt & Bitumen Ltd.* 0 where the Plaintiff Company on
an application for directions applied (inter alia) for an order that the
Defendant Company should disclose the analysis of the substance
(a certain red mastic) in suit, an order was made for inspection of
the Defendant Company's substance and the process for making the
same, in spite of the Defendant Company's objection on the ground
that their product was tho subject of a secret process. The inspec-
tion was however ordered to be restricted only so as to be had by the
Plaintiff's Solicitor, the Plaintiff's Counsel and one expert on certain
terms. The precise order made in that case whioh is of considerable
interest was as follows : —
“It is ordered that the Plaintiffs by their Solicitor Mr. Key,
Counsel Mr. Lloyd Jacob and also Mr. Alan Wolf of 105a,
Barrowgate Road, Chiswick in the county of Middlesex,
the expert nominated on behalf of the Plaintiffs, be at
liberty within 14 days of this Order, at a time to be agreed
between the Solicitors for the parties, to enter upon the
premises of the Defendants and inspect and examine the
materials and process used by the Defendants in the manu-
facture of the red mastic referred to in paragraph 2 of the
Particulars of Breaches and at the Defendants’ premises to
make any tests or analyses which may be thought fit by
the said expert and to make and/or carry away such notes,
records or the like as may be neoessary for the purposes
of this action and a sample or samples of the manufactured
mastic, provided that the said Messrs Key, Lloyd Jacob
and Wolf shall not at any time disclose anything appear-
ing at the said inspection, which is claimed by the Defen-
dants to be a secret process, except by leave of this Hon'ble
Court, but shall be entitled to report to the Plaintiffs,
without giving any details, whether or not in the opinion
of any one of them the same infringes the Letters Patent
40
(1936) 53. R. P. G. 89.
748
THE LAW OF PATENTS IN INDIA
[Ch. xvn
in suit. And it is ordered that the said Defendants do
give ail other reasonable facilities for the purpose of the
said inspection, tests and analyses and that the costs of
this Summons be costs in the action.”
References to oertain other English cases in which orders have
been given for inspection of apparatus, from which the principles on
which the Courts have acted in such cases may be observed, are
given in the note below. 41
Inspection of prior users.
In a case where the Defendant disputes the validity of the
Plaintiff’s patent on the ground of prior user (of which as required
he gives specific instances), it may be as necessary to the conduct of
the Plaintiff’s case for him to obtain inspection of any apparatus
alleged to constitute such prior user, as it is in other cases for him
to obtain inspection of the apparatus of the Defendant which the
Plaintiff alleges to be an infringement. But in regard to this the
position is different, in that, the owner of the apparatus not being a
party to the suit, the Court cannot make any direct order against him
for the inspection of his apparatus by the Plaintiff. If the third
party owning the apparatus in question refuses to allow it to be
inspected prior to the hearing, it is not possible for the Court to
order any inspection of such apparatus. It was to get over this
difficulty, as far as possible, that in England Rule 16 of Order 53A
was framed in regard to English procedure. The material part of
that Rule reads as follows : —
“No evidence as to any machinery or apparatus which is
alleged to have been used prior to the date of the patent
41 See Batley v. Kynook- (1874) L. R. 19. Eq. 90 ; Germ Milting Co. Ltd.
v. Robinson (1884) 1. R. P. C. 217 ; Cheetham v. Oldham <0 Fogg (1888) 5. R. P. C.
617 ; British Thomson- Houston Co. Ltd. v. Duram Ltd. (No. 2) (1920) 37. R. P. C.
121 ; Solaflcx Signs Amalgamated Ltd. v. Allan Mnfg. Go. Ltd. (1931) 48. R. P. G.
577 ; Junkers v. Ford Motor Car Go. Ltd. (1932) 49. R. P. C. 347 at p. 348:
British Gelanese Ltd. v. Gourtaulds Ltd. (1933) 50. R. P. G. 63 at p. 80. See also
Patent Type Founding Co. v. Waller 8. W. R. 353. Mo Dougall Bros. r. Partington
(1890) 7. R. P. C. 351, 472 (C. A.) ; Stdebottom v. Fielden (1891) 8. R. P. C.
266.
What is here considered is an application by a party to the suit for inspection
of apparatus belonging to the opposite party. As to an application for inspection
to be had by the judge see Part IV below.
Ch.XVH]
EXPERIMENTS
749
and which is in existence at the date of the delivery of the
particulars shall be receivable, unless it be proved that the
party relying on such prior user has, if such machinery or
apparatus be in his own possession, offered inspection of
the same, or if not in his own possession, has used his best
endeavours to obtain inspection of the same for the other
parties to the proceedings/’
There is no suck Rule in force in India. Accordingly there
appears to be no means by which the Court in India can make an
order which will result in affording inspection for a Plaintiff of any
apparatus of third parties relied on by the Defendant as instances of
prior user : except in cases where this may be made a condition
precedent to the giving of some other direction favourable to the
opposite party.
11. Application regarding the making of experiments ; and for
appointment of an expert to make experiments and report.
In England an application is commonly made under modern
English patent practice for the evidence of experiments to be limited
to those performed in the presence of the scientific witnesses of both
parties. 42
It is submitted that a Court in India may have an inherent
power to make an order to that effect. In any event it might be to
the advantage of both parties, at the time of obtaining directions, to
consent to such an order being made.
After the hearing has begun, experiments have been allowed
in a proper case concerning matters which have arisen during tho
hearing. 43
There is also now a procedure available in England whereby
arrangements may be made to have experiments made by an expert
appointed not by the parties but by the Court and for him to make
his report direct to the Court. This is done under a special English
Order being Order 37A of the Rules of the Supreme Court, which is
applicable in all suits and not merely in Patent actions. It regulates
in clear terms the procedure, which may be adopted by the Court, in
4 * See Junkers v. Ford Motor Car Co. Ltd. & Cooper (1932) 49 R.P.C.
347 at p. 348.
41 See British Celanese Ltd. v. Courtaulds Ltd. (1933) 50 R.P.G. 63 at p. 84.
760
THE LAW OF PATENTS IN INDIA
[Ch. XVII
its discretion, on the application of any party, for appointing an
independent expert who is to be called “the Court expert”. Refer-
ence may also be made in regard to modern English Court procedure
to Order 38A, Rule 8(8) of the “New Procedure Rules”.
Even before these orders came into existence it has long since
been held in England that the Court has power in a Patent suit to
call in an independent expert to make certain experiments and
report thereon to the Court or merely to report on certain points
to the Court. 44
There are no orders or rules of procedure in force in India
corresponding to the English Order 37A or Order 38A, Rule 8(3)
above mentioned. Nevertheless it is submitted, that in a Patent
suit a Court in British India will have inherent power in its discre-
tion to appoint an expert to report to the Court on certain points
or to make experiments and report thereon to the Court on similar
principles as Courts in England have been held to have such
inherent power. This being so, since the specific orders mentioned
as being now operative in England merely provides a procedure for
the exercise of this inherent power, it is submitted that the same
procedure may conveniently be followed in India where necessary.
Since such procedure has been found by long experience to be a
convenient course in such cases in England, it may be of interest
to note here the features of that English procedure ; in case it may
be found convenient for a similar course to be taken in any given
patent suit in India which may call for the appointment of an expert
on such lines.
The wording of Order 37 A of the English Rules & Orders is
as follows : —
Court Expert.
“37A. 1. In any case which is to be tried without a jury
involving any question for an expert witness the Court or
a Judge may in his discretion at any time on the applica-
tion any party appoint an independent expert (to be called
44 See Moore v. Bennett (1884) 1 R.P.C. 129 (O.A.) ; Badische Anilin und Soda
Fdbrik v. Levinstein (1885) 2. R.P.C. 73 and 4. R.P.C. 449 (H.L.) at p. 454 ; North
British Rubber Co. v. Macintosh A Coy. Ltd. (1894) 11. R.P.G. 477 ; British Motor
Syndicate v. J. F. H. Andrews A Co. Ltd. (1899) 16. R.P.C. 577 at p. 591 ; see also
Mellin v. Monico (1877) 3. C.P.D. 142, at p. 149.
Ch. XVII]
EXPERIMENTS BY A COURT EXPERT
751
"the Coart expert”) to inquire and report upon any ques-
tion of fact or of opinion not involving questions of law or
construction (hereinafter called “the issue of the expert”).
(2) The report so far as it is not accepted by all parties shall
be treated as information furnished to the Court and shall
be given such weight as the Court may think fit. The
report shall be made in writing to the Court, together
with such carbon or other copies as the Court may require,
and copies of the report, shall be forwarded by the proper
officer to the parties or their solicitors.
(3) Any party shall be at liberty within 14 days after receipt
of a copy of the report, or such other time as the Court or
Judge shall direct, to apply for leave to cross-examine
the Court expert on his report, and the Court or Judge
shall on such application either (a) make an order for the
cross-examination of the Court expert by all parties at the
trial, he being called and sworn at such stage, as the
Court shall at the hearing direot or (b) make an order for
a like cross-examination before an Examiner at such time
and place as the Court shall direct.
(4) The Court expert shall if possible be a person agreed
between the parties, and failing agreement shall be nomi-
nated by the Court or Judge. The question or the ins-
tructions submitted or given to the Court expert, failing
agreement between the parties, shall be settled by the
Court or Judge.
(5) If the Court expert is of the opinion that any experiment
or test of any kind is necessary to enable him to report in
a satisfactory manner (other than any experiment or test
of a trifling character), he shall communicate the fact to
the parties or their solicitors and shall endeavour to
arrange with them as to the expenses involved and as to
the persons to attend and other similar matters. Vailing
agreement between the parties all such matters shall be
determined by the Court or Judge.
(6) The Court or Judge may at any time direct the Court
experts to make a further or supplemental report which
shall be treated as annexed to his original report.
(7) The remuneration of the Court expert shall be fixed by
the Court or Judge and shall include a fee for making
the report, a fee for any supplementary _ report and a
proper sum per diem for each day during which the
presenoe of the Court expert may be required either in
Court or before an examiner. The parties shall be jointly
and severally liable to pay the remuneration so fixed with-
out prejudice to the question by whom it shall be ordered
to be paid as part of the costs of the action or proceeding.
Provided however that in any case in which the appoint-
752
THE LAW OP PATENTS IN INDIA
[ck. xvn
ment of a Court expert ia opposed, the Court or Judge
may require the party applying for the appointment to
give such security for the remuneration of the Court
expert as the Court or Judge may think proper as a condi-
tion of making the appointment.
(8) Any party shall be at liberty on giving reasonable notice
before the trial to call, with regard to the issue for the
expert, not more than one expert witness, provided that
in exceptional cases and by the leave of the Court two or
more expert witnesses may be called. Provided however
that the co&ts of and occasioned by the calling of any
such expert shall be specially dealt with by the Judge at
the trial, and that no such costs shall be allowed to a
successful party unless the Judge shall certify that the
calling of such expert was reasonable and that his evi-
dence has materially assisted the Court in determining the
question or issue.
(9) In any case in which more than one issue for the expert
shall arise the Court or a Judge may appoint more than
one Court expert to inquire and report on the separate
issues so arising, and these Rules shall apply to each
Court expert so appointed.
(10) In taxing the costs incurred in proceedings in which a
Court expert shall have been appointed, such just and
reasonable charges and expenses as appear to have been
properly incurred in obtaining the advice of an expert
(whether called as a witness or not) as to whether the
action should be brought or defended or as to whether
the report or reports of the Court expert should be accept-
ed to any and what extent or as to the matters on which
he might properly be cross-examined upon his report or
reports, including if proper the attendauce in Court of the
expert so employed are to be allowed.
(11) The word “Expert” in this Order shall include scientific
persons, medical men, engineers, accountants, actuaries,
architects, surveyors and other specially skilled persons
whose opinions on any question relevant to the issues
involved would be received by the Court.”
The wording of Order 38A, Rule 8(3) is : —
“(3) The Judge may order that any question involving expert
knowledge shall be referred to a special referee for inquiry and
report, and in particular and without prejudice to the general
power, the Judge may refer to a special referee for inquiry and
report any question arising as to the nature, extent and permanence
of any inquiry caused or alleged to have been caused by the negli-
gence of a party on the terms (a) that the report when received
Ch. XVU] LIMITING NUMBER OF SCIENTIFIC WITNESSES 753
shall be communicated ta both parties with a view to ascertaining
whether they' are willing before further expense is incurred to agree'
to accept the report in whole or in part ; (b) that in so far as the
report is hot accepted by both parties it shall be treated as informa-
tion furnished to the .Court and shall be subject to the criticism of
any expert witness called at the trial, and shall be given such weight
in deciding any question of difference between the expert witnesses
as the Court shall think fit ; (c) that the proper remuneration of the
referee shall be fixed by the Judge after the receipt of the report,
and that the parties shall be jointly and severally liable to pay the
remuneration so fixed to the referee, and (d) that the costs of the
reference — including the remuneration of the referee, unless other-
wise ordered, shall be costs in the action.”
12. Application for limiting the number of scientific witnesses.
That some limit should be placed on the numbers of scientific
or "expert” witnesses to be called by either side at the hearing, is
now recognised in England in the terms of the English Order
53A, Rule 21 A governing the obtaining of directions in a patent
suit ; to which reference has already been made (see page 739).
There is no such specific provision in India. It might be of
advantage for the purpose of saving the unnecessary expense of
protracted hearings if some such rule were to be specifically enacted
in India. It would seem very doubtful whether Section 31 of the
Indian Act (corresponding to Section 34 of the English Act), by
itself, is sufficient to give power to a Court in India to refuse to
allow a party in an infringement suit to call as many expert wit-
nesses as he may desire or to give any directions to that effect unless
the parties consent.
18. .Application for administering interrogatories.
In addition to such discovery of documents as is afforded by
the filing of an affidavit of documents, discovery of facts may also
be obtained in a proper case through the administration of interro-
gatories. This again is a process which becomes often more than
ordinarily important in Patent suits owing to the circumstance, that
it so often happens that the facts which are required to prove the
case of the one party are more peculiarly within the knowledge of
the other party. The general provisions in India regarding the
95
7B4 THE LAW OP PATENTS IN INDIA [Ch. XVD
procedure for the administration of interrogatories are contained
in Order 11, Rules 1 to 11, of the Civil Procedure Code ; as to which
see also the commentary in Mulla’s Civil Prooedure Code (10th
Edn.) p. 608 et seq. In the hope of saving oosts it will be advis-
able that a request for information, worded in a manner similar to
the proposed interrogatories, be sent in the first place in the form of a
letter to the Attorney of the interrogates ; for if the required infor-
mation is received by letter in reply there will be no need to incur the
costs of an application for formal interrogatories through the Court.
What interrogatories will be allowed.
Though there is no Indian case law on the subject of interro-
gatories in Patent suits, it is submitted that, the principles govern-
ing the procedure in India and in England being the same in this
matter, English decisions may be usefully if not authoritatively
relied on. The following are instances where interrogatories have
been allowed in England : —
As to true and first inventor : —
Whether a certain person was not the true and first inventor
of the patented process in suit. 45
As to sales : —
Where infringement is not admitted : questions to the effect
whether Defendant did not on such and such a date sell suoh and
such goods to so and so. 45
This may be a most useful and effective form of interrogatory
by which much time and the giving of much evidence may be saved
at the hearing.
As to facts showing utility and as to process used : —
Where utility is denied : questions whether in fact the Defend-
ant used or uses the patented article or process have been allowed. 47
** And as to facts regarding novelty see Hoffman v. PostiU (1869) 4. Ch.
App. 673.
4 * See Lister v. Norton Bros, db Co. Ltd. (1885) 2. R. P. 0. 68.
4T See Renard v Levinstein (1864) 11. L. T. 79 at p. 81 ; Rylands v. Ashley's
Patent ( Machine Made) Bottle (Jo. (1890) 7. R. P. G. ITS (C. A.) Contrast Jourdian
▼. Ptilmer (1866) 12. Jur. N. 8. 214 ; see also Ashworth v. Roberts (1890) 7 R. P. O.
Ch. xvn] INTERROGATORIES 755
As to prior user : —
The position has altered in England owing to the new
rules embodied in Order 53 A* Rule 18, which give a Plaintiff
a right to compel a defendant alleging invalidity on the
ground of prior user, to give full particulars in his Particulars of
Objections. It is seldom then in modern practice in England there
will be any need to resort to interrogatories to obtain particulars of
prior user. It is submitted that in general the proper course in
India also will not be to administer interrogatories in such a case
but to apply for further and better particulars : for even though
there is no specific rule of procedure in India corresponding to Order
53A, Rule 18, it may be expected that a Court in India also would
order the particulars to be given on' general principles as being
neoessary and proper particulars within Order 6, Rule 5 of the Civil
Procedure Code. In any event it will be advisable for the Plaintiff
by one method or the other to obtain the requisite information before
the hearing. References to some of the English cases under the old
practice are given for what they are worth in the note below as
authority for the Plaintiff’s right to interrogatories in such cases,
should resort to interrogatories be necessary. 48
As to name of manufacturer : —
Where a defendant, who is sued as a user of the infringing
article, states that he does not know how the article is made, he has
been ordered to give the name of the manufacturer where the Court
has been satisfied that this will enable the Plaintiff to prove
infringement. 49
Limits of answers that need be given : —
Where the interrogatee is a company, answers need only be
451. Benno-Jaffc and Darmstaedter Lanolin Fabrik r. John Richardson db Oo. Ltd.
(1893) 10. R. P. C. 136 ; See also AAtienyesellschaft fur Anilin Fabrikation in
Berlin db anr. v. Levinstein Ltd. (1913) 30 R. P. C. 401 (C. A.) and 30. R. P. C.
673 ; Osram Lamp Works Ltd. v. Pope's Electric Lamp Go. (1914) 31. R. P. 0. 313.
4a See Alliance Pure White Ijead Syndicate Ltd. v. Me Ivor's Patents Ltd.
(1891) 8. R. P. G. 321 ; Birch r. Mather (1883). 22. Ch. D. 629 ; Orossley v.
Tomey (1876) 2. Ch. D. 533 ; General Electric Co. (1900) Ltd. v. Safety IAft
db Elevator Oo. (1904) 21. R.P.0. 109 *, compare Flower v. Lloyd (1876) 45. L.J. Ch.
746 (explained in Birch v. Mather above) and Daw v. Eley (1865) 2.H4M. 925.
4 * See Saccharin Corporation Ltd. v. Haines Ward db Co. (1898) 15. R. P.
0.344.
®6 THE LAW OF PATENTS IN INDIA [CfcXVH
given of knowledge which the directors have - acquired, ip their
capacity as directors on behalf of the company, and need not state
matters of knowledge acquired by them in their personal capacity.”
As to extent of infringement : — h
Ab to this and other matters which do not arise until the
enquiry as to damages, which does not ordinarily take place until
after the suit, interrogatories are not ordinarily allowed in the suit .® 1
As to names of customers : —
A defendant may be asked whether he has sold the article in
suit to anyone and if so to give the name of the customers . 52
As to names of suppliers : —
Cases have arisen, where the names of the suppliers of the
goods (the sale of which by the defendant is the alleged infringement
in the suit) are relevant. Ordinarily these will, not have any
bearing on any matter in issue between the parties in the suit : but a
case where interrogatories were allowed was where the patent in
suit was for a process of chemical manufacture, where the plaintiffs
showed that they knew every process employed by various rival
manufacturers, where some of such processes were infringing pro-
cesses and some were not, where the manufactured product was in
itself similar after all processes of manufacture ; and where the suit
was against the defendants as sellers only (and not manufacturers)
of an article said to have been manufactured by an infringing
process. There the Court allowed the interrogatories because it
considered that proof of the identity of the manufacturer would
show whether the goods had been manufactured by an infringing or
a non-infringing process and accordingly whether the defendants
were selling infringing or non-infringing goods . 53
Time for administering interrogatories : —
It has been held in effeot that the Plaintiff must file, his plaint
with his Particulars of Breaches before administering any inter-
*° See Welsback Incandescent Oas Light Co. Ltd. v. New Sunlight Incan-
descent .Co. Ltd. (1900) 17. R. P. 0. 401.
• * Terrell p. 414.
»» See Lister v. Norton Bros. <b Co. Ltd. (1885) 2. R. P. 0. 68 ; Stahlwerk
Becker A.G. (1917) 34. R. P. C. 344.
1 ’ gee Saccharin Corporation v. Baines (1898) 15. R. P. C. 344 (C. A.) ;
Stahlwerk Becker A.g. (1917) 34. R. P. G. 344.
Ch.xvn]
COMMISSION
.757
rogatories * but that where he is not in a position to ' give full
particulars in his Particulars of Breaches without obtaining further
facts from the -defendant, he may make an application for the
administering of interrogatories so as to obtain the necessary foots
and then amend his Plaint or Particulars of Breaches afterwards. 84
14. Application for commission.
Whether it be for the purpose of obtaining the evidence of ex-
perts resident abroad whom it is impossible to bring to Court or for
the purpose of proving other facts which it is necessary to establish
in the suit, it will frequently happen in Patent Suits that it will be
found advisable by one party or the other, or both, to have the
evidence of witnesses examined on commission. Ordinarily any
witness resident within 200 miles of the Court may be compelled to
come and attend Court on the day of the hearing of the suit by the
issue of a sub-poena which is issued, as of right, on application being
made therefor, by the Court hearing the suit (see Civil Procedure
Code Order 16, Rule 1 read with Order 16, Rule 19). But no person
resident beyond such 200 miles radius can be so compelled to attend ;
and accordingly if the evidence of such a witness is required, this
can only be obtained by an application to have his evidence taken
at his place of residence (or at some other convenient place) on
commission. While the Court hearing the suit has power ordinarily
to issue a summons to compel the attendance in its Court for giving
evidence of any witness resident within 200 miles of that Court
under Order 16, Rule 19, the power to issue a commission is given in
relation to any witness resident beyond the local limits of that Court.
It is possible therefore that a commission might be asked for to
issue for the examination of a person resident outside the local
limits but inside the 200 mile radius, if there were special reasons
making it more than ordinarily difficult for him to attend Court :
ordinarily however the Court will refuse to issue any commission
for the examination of a witness resident within the 200 mile
radius in view of the powers it has to compel his attendance by
sub-poena.
The hearing Court may either issue the Commission to any
Court, not being a High Court, within the looal limits of whose
14 See Jones v. Platt (1861) 7. Jur N. S. 978 ; compare Edler v. Victoria
Press Mnfg. Co. (1910) 27. R. P. C. 114.
.758
THE LAW OF PATENTS IN INDIA
[Oh. XVU
jurisdiction the witness resides : In which oase that distant Court
will appoint the Commissioner, and the Commissioner will return hi#
Commission, when exeouted, to that distant Court, who will 1 forward
the proceedings to the hearing Court. Or the hearing Court may
itself appoint any pleader or other person as Commissioner who will
return his Commission direct to the hearing Court. . In whioh case
the hearing Court may either, as it oommonly does, appoint a practi-
tioner known to it, who practises and is resident within the locality
of the hearing Coart, who will then travel to and from the place of
the .commission ; or it may itself directly appoint a person resident
within the locality of the commission. The Court ordering the
commission will be less likely to adopt the latter course unless the
parties consent to a particular person to be appointed Commissioner,
or unless such' person is known to the Court, since it may consider it
unsatisfactory to appoint an unknown person as its Commissioner.
Should the parties desire to avoid the expense of sending out a
travelling Commissioner, then the Court ordering the Commission
may leave the selection of the Commissioner to the distant Court. In
spite of the additional expense of a travelling Commissioner, both the
parties themselves and the Court issuing the commission may con-
sider it preferable, particularly in a patent suit, that the selection
of the Commissioner may be made by the Court hearing the suit.
In either case if a commission is ordered, the Commissioner
will have the powers of a Civil Court, and may in case of necessity,
by application to the Court within the local limits of whose jurisdic-
tion a witness resides, effect the issue of a summons for the examina-
tion of any witness : under Rule 17 of Order 26 of the Code of Civil
Procedure.
A# to Appeal.
An order granting or refusing a commission is not one of the
speoiflo appealable orders under Section 104 and Order 43, Rule 1 of
the Civil Prooedure Code. An order granting a commission is also
clearly not a judgment within the meaning of Clause 15 of the
Letters Patent of 1865 of the Calcutta High Court : and is not there-
fore appealable thereunder. 55 It is also established, for the Caloutta
High Court at least, that an order refusing an application for com-
** See the Calcutta High Court Buies (3 Edu.)
ok. xvn]
ASSESSORS
759
mission is also not appealable under Clause 15 of the said Letters
Patent ; not being a judgment within the meaning of the Clause. 56
15. Application for hearing with Assessors.
Owing to the highly technical questions whioh may be involved
in certain Patent suits, provision has been made for the Court, if it
thinks fit, to appoint an expert as an Assessor to assist it in the trial
of the suit. The relative provisions of Section 35 of the Indian Aot
are as follows : —
“35. (1) In a suit or proceeding for infringement or revooation
of a patent, the Court may, if it thinks fit, and shall on the
request of all the parties to the proceedings, call in the
aid of an assessor specially qualified, and try the case
wholly or partially with his assistance.
(2) A Court exercising appellate jurisdiction in respect of such
suit dr proceeding may, if it thinks fit, call in the aid of an
assessor as aforesaid.
(3) The remuneration, if any, to be paid to an assessor under
this section shall in every case be determined by the Court
and be paid by it as part of the expenses of the execution
of this Act.”
The corresponding Section of the English Act of 1907-1932 is
Section 31 similarly worded. It appears that the inoonvenienoc of
trial with an assessor has resulted in this course being rarely adop-
ted in England, the more usual course being, where expert technical
assistance is required by the Court, for an expert to be appointed to
make experiments and report to the Court, or for experiments to be
made by the extorts of the parties in the presence of both parties.
As to the procedure adopted where an Assessor has been appointed
under Section 31 of the English Act and has sat with the Court (see
the cases referred to in the note). 57
51 See Toremull Dilsook Boy v. Kunj Loll Monohar Does. (1920) 31. C. L. J.
162. The Madras High Court has taken the same view in Tuljaram Row. v.
Alayappa Ohettiar (1910) 36. Mad. 1. (F. B.) overruling (1900) 30 Mad. 143.
Maruthamuthu PiUai v. Krishnamacharian.
Hattersley & Sons Ltd. v. Hodgson Ltd. (1905) 22. R. P. C. 229 ; Mnckie V.
Barry (1886) 2. R. P. C. 146 ; Marconi v. Helsby Wireless Telegraph Co. IAd.
(1914) 31. R.P.O. 121. As to the practice in the Court of Appeal see Hattersley v.
Hodgson (above) ; and c.f. Moore v. Bennett (1834) 1. R. P. 0. 129 (O. A.). Compare
Order 36, Rules 2 and 43 of the English Rules of the Supreme Court.
TOO
THE LAW OF PATENTS IN INDIA
[Ch. xvn
As to Costs. ' : '
Section 35 of the Indian Act of 1911 provides that the costs
are paid by the State and not by the parties.* 8
16. Application for hearing of the suit in camera.
If one of the parties contends that a process in question used
by him. is a secret process, he may desire to obtain an order that the
suit shall be heard in camera. In England, in a proper case, such an
order has been made to avoid unreasonable business loss to a party.
In such a case arrangements have also been made for the shorthand
notes of the suit to be impounded.* 9
It is submitted that, in a proper case in which one of the
parties may stand to suffer irretrievable loss if his secret process is
divulged, a Court in India will have inherent power to make an order
for the suit to be heard in camera, if it thinks fit. 80
17. Application for consolidation of suits.
On principles similar to those on which a Plaintiff has, as pre-
viously mentioned, been allowed to sue on several different patents
in one suit, it is submitted, that if a Plaintiff has filed several suits
on several different patents, the breach of which is all claimed to be
by or in. relation to one article, such a Plaintiff on application, would
be entitled to obtain consolidation of his several suits so as to have
them heard as one suit ; thus saving the extra costs.
It has been held that the Court has inherent power under
Section 15 of the Civil Procedure Code to make suitable orders for
the consolidation of suits. 61
18. Application for stay of the suit.
Should there be another suit in existence in which the issues
should be similar, or partially similar, to those in the suit now in
question, it may be advisable for an application to be made for the
” For an Indian case where the Act was so applied see the judgment of
Gregory J. in Indian Vacuum Brake Coy. Ltd. v. E. G. Luard (1926) 63. Cal. 306
at p. 318.
** See Badisehe Anilin und Soda Fabrik v. Levinstein (1885) 2.R.P.C. 73.
" For a precedent of an order in such a case prerenting disclosure of
evidence see Badisehe Anilin etc. v. Levinstein (1885) 2. R.P.C. 73 (ibid) at p. 85.
“ See Mulla (10th Edn.) p. 435 note (p.) and cases there cited.
STAY OF THE SUIT
761
Ch. XVII]
stay of fche suit pending the disposal of the other suit. The matter
then governed by Section 10 of the Civil Procedure Code.
As to appeal.
It has been held that an order either to allow or to refuse a
stay of a suit is a Judgment within the meaning of Clause 16 of the
High Courts Letters Patent of 1865 ; and is therefore appealable
thereunder. 62
It is possible that in certain circumstances even if the applicant
is not entitled as of right to a stay under Section 10 of the Civil
Procedure Code, yet where there is another suit or appeal or pro-
ceeding to be heard involving the same issues, or even some of the
same issues, the court may be willing to order an adjournment of the
suit in question for reasons of general convenience. In such case
the Court may either direct that the suit shall stand over definitely
until the other matter is disposed of ; or it may grant a provisional
adjournment for a fixed period after which the question of the date
of hearing may be again considered. 03
19. Application for an early date to be fixed for the hearing.
It may be important for the parties, or one of them, for parti-
cular reasons, that the suit should be heard and decided at an early
date. In many cases it may be that if an order is obtained from the
Judge for an early hearing there will be no need for an injunction or
for certain other relief, which might otherwise need to be asked for.
In such cases an application may be made if desirable, for an early
date to be fixed for the hearing of the suit.
20. Application for judgment on admissions.
The procedure embodied in Order 12, Rule 6 of the Civil Proce-
dure Code is as applicable* to Patent suits as to any other suits.
In some cases this procedure may be used as an effective form of
summary procedure for the benefit of the Plaintiff. The I laintiff
will be equally entitled to make such an application for judgment
aa See Jivanlal Narsi v. Pirojshaw R. VaJcharia Co . (1933) 57. Bom. 364.
at p. 868.
• > gee different courses adopted in Smith v. Upton (1843) 6. M. & G. 251 ;
Muntx ?. Foster (1842) 7. Sc. N. R. .898 ; Welsback Incandescent Gas Light Co. Ltd.
v. John Me Grady & Co. (1901) 18. R. P. C. 513 ; Dunlop Pneumatic Tyre Co. Ltd.
v. R iming ton Brothers db Co. Ltd • (1900) 17. R. P. C. 665. (C. A.)
96
THE LAW OF PATENTS IN INDIA
[Ch.XVH
on admissions whether the suit is being brought in a District Coart
or in a High Court. In patent suits such a situation may not in-
frequently arise where the Defendant admits infringement in reBpeot
of part of the allegations in suit, but joins issue as to the rest.
If the suit is being in a High Court, it may be that the Buies
of the particular High Court, in which it is brought, allow a Plaintiff
also to have the benefit of another form of summary procedure in
certain circumstances : as is provided, for example, in the Calcutta
High Court under Chapter XIIIA of the Rules of that High Court.
But as such summary procedure is available only for suits for debts
or liquidated demands, it is not available to a Plaintiff in the usual
suit for infringement of a Patent. It will be found however in practice,
that, in most cases, whatever advantage might have been obtained
under an application under Chapter XIIIA, if it had been available,
may be equally well obtained by an application for judgment on
admissions under Order 12, Rule 6 of the Civil Procedure Code.
As to appeal.
It has been held that an Order in a High Court rejecting an
application for judgment on admissions is a “judgment” within the
meaning of Clause 15 of the Letters Patent of 1865 and is appealable
thereunder. 84
21. Disposal of the suit in the absence of any defence on the part
of the Defendant Application to have the suit placed on the
undefended list
N. B . — What is stated under this heading is only applicable
when the suit for infringement has been brought in a High Court :
it is not applicable to District Courts.
If the suit is brought in a High Court it may be found that,
under the Rules of the particular High Court in which it is brought
it is open to the Plaintiff in the event of the Defendant, if he has
entered appearance, thereafter making default in not filing his
Written Statement within the period allowed him, to make an appli-
cation in Chambers for the suit to be plaoed on the Undefended
last. If such application is successful the suit will come up for
hearing as an undefended suit and be disposed of at an early date.
* 4 See KorumaU Ratnballav v. Mongilal Dalimchand ( 1919) 23 C. W. N. 1017.
Ch. XVII]
THE UNDEFENDED LIST
703
In the Calcutta High Court such an application may be made
under Chapter IX, Rule 3 of the Rules of that High Court,
If a suit is settled entirely, or in such circumstances that the
parties require only an order for taxation of costs, the setting down
of the suit in the List of Undefended Suits for its disposal may be
obtained by requisition by letter to the Registrar under Rule 15 of
Chapter X of the Rules of that Court.
In cases where the Defendant has failed to enter appearance,
or there has been a specific direction of the Court to the requisite
effect, the suit will of course be placed in the Undefended List by
the Registrar, without the necessity of any application being made
for the purpose by the Plaintiff. This is provided for under the
Caloutta High Court Rules under Rule 25 of Chapter X, which is
as follows : —
“25. (a) Where a sole defendant has, or all the defendants,
being sui juris have failed to enter appearance, or (b)
where in cases under Order XXXVII of the Code, a sole
defendant has, or all the defendants being sui juris, have
failed to obtain leave to defend, or (c) a direction under
Chapter XII, rule 6 has been given, or (d) where an
order has been made for the transfer of the suit to the
Undefended List — the suit shall, unless otherwise ordered,
be set down in the Peremptory List of Undefended Suits,
in case (a) on the first available day after the expiry of
the time for entering appearance, and in cases (b), (c) and
(d) on the first available day as the case may be, after the
date of the direction, or the filing of the order, and the
expiry of the time or the non-compliance with the terms
of the order.”
In the Bombay High Court the course of dealing with the list
of suits is somewhat different, though in practioo the result is much
the same in that, if the Defendant delays in filing any Written
Statement, an order may be obtained on him to do so within a definite
period, and then, if he has not done so after the expiry of such period,
the suit will come up for hearing as an undefended suit. In the
ordinary course no special application is required to be made by
the Plaintiff in Bombay to have the suit plaoed on the undefended
764
THE LAW OF PATENTS IN INDIA
[Ch. XVH
list in such oircum stances. The matter is regulated by Buie 22 of
Chapter 2 of the Buies of that High Court which is as follows : —
“22. Suits in which written statements are called for but not
furnished are set down each week for hearing as
undefended ”
22. Dismissal of the suit for want of prosecution on the part of
the Plaintiff. The Special List.
N. B. — What is stated under this heading is only applicable
when the suit for infringement has been brought in the High Court of
Calcutta : it is not applicable to District Courts or to the High
Courts of Bombay or Madras.
If the suit is brought in a High Court, it may be found that
under the Rules of the particular High Court in which it is brought,
the suit becomes liable, after the lapse of a fixed time, if not properly
proceeded with, to be dismissed for want of prosecution.
In the Calcutta High Court suits, which have not become
effective for hearing within six months from the date of institution,
are regularly placed in what is known as “the Special List” for
consideration by the Judge ; and are then, if no step has been taken
in the suit, liable to be dismissed for want of prosecution. The rule
which authorises this course is Rule 36 of Chapter X of the Rules
of the Calcutta High Court : as follows : —
"36. Suits and proceedings, which have not appeared in the
Prospective List within six months from the date of
institution, may be placed before a Judge in Chambers,
on notice to the parties or their attorneys, to be dismissed
for default, unless good cause is shown to the contrary,
or be otherwise dealt with as the Judge may think proper.”
It has been held that this rule is not ultra vires, the Court
having the power to make it under cl. 37 of the Letters Patent. 65
It may be noted that though the word used is "may”, the
practice is for all such suits regularly to be placed on this Special
List ; and a Patent suit will not be treated differently to any other
suit in this respect. It is to be noted therefore that it may be a
Udoy Chand Panna Lai v. Khetsidas Tilokchmd (1924) 28 C. W. N. 916.
Ch. XVII] DISMISSAL OF SUIT FOR NO PROSECUTION 765
matter of vital importance for the Plaintiff, that once the suit is
instituted, active steps be taken to bring it to a hearing. No appli-
cation is required by a Defendant to have a suit placed in the
Special List ; it will be sorted into the Special list by the officials
of the High Court. No comments are called for in regard to the
procedure of such dismissal for want of prosecution in particular
relation to Patent suits. It will be of interest merely to note that
it is open to the Plaintiff even after his suit has been placed on the
Special List and dismissed for want of prosecution, to file a fresh
suit — provided he is not by that time barred by limitation.
The Calcutta High Court Rules also express provision in res-
pect of a suit in which there has been an order passed for a reference
to account, on an application being made by the Plaintiff, for the
suit to be dismissed also for want of prosecution if due diligence is
not shown in prosecuting the reference. This is provided for under
Rule 8 of Chapter 26 which is as follows : —
“8. Where no steps are taken within 30 days to apply for and
file a decree or order or reference, or where no office copy
thereof is filed in the Accounts Department within the
time prescribed by rule 4 or within such further time as
may have been allowed, any party may apply to a Judge
by summons that the suit be dismissed for want of prose-
cution or that all further proceedings under the reference
be stayed or such order made as to the Judge shall
seem fit.”
In respect of cases in which the order for the Reference has
been duly applied for and filed, but thereafter there is a want of
prosecution of the reference, further provision is contained in the
Calcutta High Court Rules for the striking out of the Reference for
want of prosecution. This is provided for under Rules 27 and 53
of Chapter 26 which are as follows : —
"27. Where a party has made default in filing any statement
of accounts, objection, surcharge or in doing or performing
any act which he has been directed to do or perform, the
officer shall be at liberty to proceed ex parte as regards
such party as though he had not appeared, or he may
adjourn the meetings or direct any other party to file a
statement of account, or proceed to determine the refer-
766 THE LAW OP PATENTS IN INDIA [Ch. XVn
ence on the evidence before him, or strike the same out of
his list ’ of references or make such other order including
directions as to costs as* under the circumstances, he
thinks fit.”
“53. Where at any stage of a reference no steps have been
taken to proseoute it for 30 days, the officer to whom the
reference is direoted may, where he thinks fit, strike the
same out of his list and the same shall also be struck out
of the General List of References as hereinafter pro-
vided.”
In such case however the striking out of the Reference does
not necessarily put an end to the suit itself. 66
It appears that there are no specific rules in the Bombay High
Court or the Madras High Court similar to Rule 36 of Chapter X
of the Calcutta High Court such as to provide for the dismissal
of suits for want of prosecution in the same way as in the Calcutta
High Court.
23. Disposal of the suit in the event of settlement before hearing.
Though the Defendant intimates that he will not contest the
suit, and that he is willing to give an undertaking not to infringe,
the Plaintiff is nevertheless odinarily entitled (in the absence of
course of express agreement as to specific terms of settlement)
to have an order in Court for a permanent injunction. He is in such
a case notjbound to forego the costs of obtaining the requisite
decree in the suit. 67
'* See Oocool Chund.tr Oouomee v. Administrator-General (1880) 6. Cal.. 720.
•’ Sefe p. 785 below.
Ck. xvn]
TRIAL OF PRELIMINARY POINT
767
PART IV
MATTERS WHICH MAY ARISE AT OR IN CONNECTION
WITH THE HEARING OF THE SUIT.
It is now proposed to consider certain points of practice
which may arise at or in connection with the hearing of the suit.
These matters are discussed separately under the headings already
indicated (at page 648) ; such different headings being consecu-
tively numbered merely for convenience of reference.
1. Trial of preliminary point first.
If the Plaintiffs patent is invalid, no question of infringement
need arise ; similarly if it can be shown in fact that no acts amount-
ing to an infringement have been done, it might be oonsidered in
some cases waste of time and money to enter into a lengthy enquiry
as to the validity of the patent.
In certain cases the Court may direct that a preliminary point
may be heard and determined first. 1 *
In some instances it may be found that such an apparent short
ciit will in the end in practice turn out to be inconvenient ; and
even lead finally to more protracted and more expensive litigation.
The general observations which have been made from time to time
by the Court of Appeal in the High Court of Calcutta would seem
to be applicable just as much to patent suit as to others.
And it has been observed in England that in general the course
of trying a preliminary point first should only be adopted where it
appears probable that the trial of such point will decide tho suit. 3
Should it nevertheless be thought desirable that some preli-
minary point should be tried first it would seem that thiB course
1 See eg Woolf v. Automatic Picture Gallery (1903) 19. R. P. C. 425.
Stephenson Black <b Oo. v. Grant etc. (1917) 34. R. P. C. 192 (as to a registered
design) ; Murejc Welding Processes Ltd. v. Weldrics (1922) Ltd. (1933) 50 R. P. G.
178. Contrast United Telephone Co. v. Mottishead (1886)3. R. P. C. 213; see
also Hutchinson v. Pattulo (1888) 5. R. P. C. 351 at p. 356 (H L.) ; Sarason r.
Frenay (1914) 31. R. P. C. 252 at p. 260.
* See Emma Silver Mining Co. v. Giant 11. Ch. D. 918 at p. 927 (Jessel
M. R.) ; Pierey v. Young (1E80) 15. Ch* D* 475 ; United Telephone Co. v.
Mottishead (1886) 3. R. P. C. 213.
768
THE LAW OF PATENTS IN INDIA
[Ch. XVII
may be adopted under the procedure allowed under Order 15 Rule 3
of the Civil Procedure Code.
In a case where Defendant claimed a Becret process, it was
held in an English case that the question of validity might be tried
first as a preliminary issue, in order to avoid going into the question
of infringement and thereby laying bare the secrets of the process
when this might be unnecessary. 3
2. Application for adjournment.
It may happen that owing to some unforeseen occurrence it
becomes necessary for one party or the other to make an application
for adjournment of the hearing of the suit. If the suit is being
heard in a District Court any application for adjournment will require
to be made to the Judge who will hear the suit.
If the suit is being heard in a High Court, a postponement of
hearing may in the early stages be obtained by requisition to the
Registrar in certain circumstances.
In the Calcutta High Court the practice is as follows. If the
suit has not yet been placed in the Warning List, either party
through his Solicitor may write to the Registrar of the Original
Side of the Calcutta High Court and request him, owing to the
parties not being ready for the hearing, to arrange that the suit will
not be placed in the Warning List before a certain date. This
will then be done without more ado. If the suit has already been
placed in the Warning List then the matter must be mentioned to
the Judge in to whose list the suit would eventually in the ordinary
course, come. In order that the suit may be effectively so mentioned
and that the Judge may effectively deal with the matter, it is
essential that both sides are represented in Court at the time of
its being mentioned. It is therefore necessary that a letter be first
sent to the Attorney for the other side notifying him that the suit
will be mentioned before a particular (named) Judge on a certain
stated date at a certain stated time. After receiving such a letter,
the other side’s Attorney will ordinarily have the courtesy to arrange
for counsel to attend on behalf of his Client at the time and place
stated. The matter may then be mentioned without further for-
mality and the necessary directions may be given by the Judge for
* Sea Badische Anilin und Soda fdbrik v. Levinstein (1885) 2. R. P. 0. 73 ;
Hanks and anr v. Ooombes (1927) 44. R. P. C. 805 & 45. R. P. C 237.
Ck. XYHJ ONUS 7»
tbe soil to go out of the Warning List and he agOln placed in it
on a certain date* or for tbe suit to remain in tbe Warning List
but not to come into the Hearing list before a certain date t or for
a specific date to be fixed some time distant on which the suit is to
bo plaeed in the Hearing List at the top of the list subject to any
part heard suit ; or some such convenient order. If however the
other side fails to attend for the mentioning after receiving such a
letter, then there will be nothing for it but to issue a Summons to
appear in Chambers, and to make a Chamber Application for the
required adjournment. In any case if the adjournment is wanted
on grounds of illness of a party or a witness, the request for adjourn-
ment should be supported, where possible, by a dootor’s certificate
annexed to a short affidavit.
If it should be that the cause of the party requiring the
adjournment has occurred at the last minute, and it has been
impossible to mention the matter or make any application prior to
the suit being called on for hearing, the application may be made
orally in Court on the suit being called on, but it is more thau likely
that, even if the adjournment is granted, the party applying may be
ordered to pay the costs of the day. As these may amount in many
cases to Rs. 1000 or more, it is particularly advisable that if an
adjournment is even likely to be required, the mentioning or the
application therefor should be done early and before the suit
reaches the hearing list. 4
3. Onus.
As to proof of his title to the patent and as to proof of the
infringement alleged, the onus is on the Plaintiff.
As to proof of the invalidity or validity of the Patent, there
have, in England, been conflicting decisions as to where the onus
lies. The general practice iu England is for the Plaintiff to be
required to discharge the onus of making a prima facie case as to
validity in respect of novelty, utility and sufficiency. 15 It has bren
doubted whether proof of even such prima fade case is strictly
4 As to an application for adjournment pending tbe decision of a question
in another proceeding see Part IV above.
* See British Tkomson-Houmton Co. Ltd. v. Charlesworth Peebles «£■ Co.
(1923) 40. R. P. C. 426 at p. 456.
97
770
THE LAW OF PATENTS IN INDIA
[Ch. XVII
necessary : see Weber v. Xetal Products Ltd.* The Plaintiff is not
required to make even a primct facie case as to validity in respect
of showing that there has been no abase of the monopoly (i.e. as to
an issue of non-manufacture or manufacture outside the United
Kingdom) ; nor as to an issue of leave and licence granted to the
Defendant. 7
After the Plaintiff has made his prima facie case of validity
for novelty, utility and sufficiency, it is then for the Defendant to
discharge the onus of proving the invalidity alleged in accordance
with his particulars of objections : whether these be framed for want
of novelty, want of utility, or want of sufficiency, or otherwise. Thus
the onus of specific instances of prior user is on the Defendant. 8
The Plaintiff can call evidence in rebuttal. Such evidence has in
one case been admitted even after the hearing. 8 Evidence to con-
tradict such rebutting evidence has in some cases been allowed. 10
If the alleged invalidity is alleged to be on the ground that the
Patentee was not the true and first inventor, or on the ground of an
abuse of the monopoly, alleging non-manufacture or manufacture
abroad, the onus is on the Defendant as to these matters from the
first. 11
As to proof of a defence of leave and licence granted to the
Defendant, the onus on such an issue is on the Defendant from the
first. 12
It needs only to be observed that the fact that the onus is on
the Defendant 4o establish a certain issue does not mean that he
• (1933) 50. R. P. C. 211 at p. 212.
r Bee Fletcher Moulton (1913 : Edn.) p. 188 note (c).
8 See Dick v. Tullis & Son (1896) 13. R. P. C. 149 at p. 162.
0 See Boyd v. Ilorroclcs (1888) 5. R. P. C. 557.
10 See Bern Jaffc and Darmstacdter Lanolin Fabri/c v. John Richardson & Co.
(Leicester) Ltd. (1894) 11. R. P. 0. 93 and at p. 261 (C.A.) ; also see Blakey & Co.
y. Latham <0 Co. (1889) 6. R. P. C. 29 at p. 36 but see Penn v. Jack (1866) 14,
L. T. 495. As to want of utility see Minter y. Wells (1834) W. P. C. 127 ;
and Easterbrooh v. G . W \ R. Co. (1885) 2. R. P. C. 201.
11 As to the onus on the issue of true and first inventor see Nichals v. Ross
(1849) 8. C. B. 679 \ Pilkington y. Yeakley (1901) 18. R. P. O. 459 ; Ward Bros,
y. Hill (1901) 18 R. P. C. 481 at p. 490 ; Kelvin v. Whyte Thomson db Co. (1908)
25. R. P. C. 177 ; Young v. White (1854) 23. L. J. Ch. 190 at p. 196.
13 See Fletcher- Moulton (1913 : edn.) p. 188.
Ch. XVII] THE RIGHT TO BEGIN 7?1
must necessarily call his own evidence to do so : it is always open to
him, if he can, to prove his case by cross-examination of the
Plaintiff’s witness, if called, if he can sufficiently discharge the
onus in that way. 13
It is submitted that on the question of onus similar principles
to those above mentioned as having been followed in England will
be followed also in India.
4. The right to begin and the right to reply.
The right to begin is in India regulated by Order 18, Rule 1 of
the Civil Procedure Code : see also Order 18, Rules 2 and 3. The
position in Patent suits does not differ from that in other suits.
The rules of procedure as to this under the Indian Civil Procedure
Code moreover do not differ from the English practice, though
there is no precisely corresponding rule in the Rules of the Supreme
Court in England. The right to begin depends upon where the onus
in the suit lies ; and is dependent on the Rules of Evidence con-
tained in the Indian Evidence Act Sections 101 to 104 which
determine where the burden of proof lies.
The right to begin is less important in a non-jury trial such as a
Patent suit than in a jury case. It may only be important for tactical
reasons. Thus if it is considered by one party that he may be able
to make his case from the cross-examination of a witness of the
other party and then will not need to call certain witnesses on his
side, it may be important to force the other party to begin ; so as
to know soon enough whether the other side will call the particular
witness or not. Or, as the right to begin carries with it a right
to the last word, it may \)c considered important in a particular case
for that reason.
The right to begin under the Indian Procedure for the normal
course of the hearing of the suit, does not give the party having the
right to begin a right to an extra (that is to say third) speech, as
appears to be the case in England. 14
The general practice in England is that the Plaintiff in an
infringement suit usually begins : and this even though the
18 See Saccharin Corporation Ltd. v. National Saccharin Co. Ltd . (1911) 28.
R. P. 0. 291.
14 Compare the sequence of events given in Order 18, Rule 2 of the Indian
Civil Procedure Code with the sequence mentioned in the notes to Order 36, Rule
36 of the 1935 English Annual Practice.
772 THE LAW OF PATENTS IN INDIA (Cfc.XVH
on as of proving invalidity is on the Defendant. 15 But in certain
cases the Court may depart from the general sequence of events for
the course of die bearing : as by hearing the evidence of the Defen-
dant’s process before the Plaintiff closes his case. In a case where
infringement was admitted and the onus of proving invalidity by
prior user was on the Defendants, the Court in England gave the
Defendants the right to reply on the question of invalidity but
reserved for the Plaintiffs a right to reply, if necessary, generally on
the whole case.
It is submitted that in India in a case where the onus of prov-
ing invalidity is on the Defendant the Plaintiff may either refuse to
begin at all, or, if he does begin, may wait to give his evidence on
invalidity by way of answer to the Defendant’s evidence ; as is
provided by Order 18, Rule 3 of the Code of Civil Procedure.
5. Whether a party is entitled to a decision on all points.
The accepted view in England is that it is entirely within the
discretion of the Court whether it will determine a question between
the parties not actually necessary for the decision of the suit before
it. In one case the House of Lords has refused to decide whether
further claims have been infringed after holding that the Patent
was bad in regard to one claim. In another case the Court refused
to decide the issue of infringement where it had held that the Patent
was invalid. 1 "
On the other hand in another case the House of Lords heard
arguments and decided the point of substance between the parties
even though it Was of the view that the action had been wrongly
constituted. 17
It is submitted that in India in a Court of first instance, it will
be found preferable in most oases if the Court decides all substan-
tial points between the parties : not to do so may lead to muoh
waste of money in costs in the event of the deoision of the Court of
Appeal necessitating a fresh hearing of the suit.
10 See Terrell (8th edn. ) p. 424 ; Fletcher -Moulton (1913 edn.) p. 186.
* * See Fletchcr-Mdulton { 1913 : ado.) p. 183 ; and Parkimm v. Simon (1895)
12. R.P.C. 403 (H. L.) ; Tubeless Pneumatic Tyre and Capon Heaton Ltd. v. Trench
Tubeless Tyre Co. Ltd. (1899) 16. R.P.C. 291.
a * See Dudgeon v. Thomson (1877) 3. A.G. 34 ; Thorstm Nordenfelt v. Gardner
(1884) 1. R.P.C. 61. (0. A.).
Ok XVII]
FINAL BELIEFS
m
PART V
MATTERS RELATING TO THE FINAL RELIEFS
OBTAINABLE IN THE SUIT.
1. Final Injunction
As to the nature of the remedy : its extent : not perpetual.
Since the Patentee only has a monopoly for a limited period,
and since one of the basic conditions, on wirieh that monopoly is.
given to him, is, that he will in his specification give sufficient ins-
tructions, so that all the public may be enabled to have the benefit of
his invention after that period, he will in a suit for infringement,
broadly speaking, only be entitled, for the purpose of restraining
infringement, to an injunction limited to the period of the currency
of his monopoly.
At the same time it has been suggested that a sale after the
expiry of a Patent of articles manufactured during the ourrenoy of
the Patent (if the articles are such that the sale thereof during the
currency of the Patent would have been an infringement) might in
itself be infringement.
If this is so, then it would appear to be reasonable that
the injunction ordered should be a perpetual injunction in the
sense that it might perpetually restrain the sale of articles manufac-
tured during the currency of the Patent. It would not however be
perpetual in form in regard to the restraint of manufacture.
It appears that formerly in England it used to be the practice
in infringement suits to issue injunctions in that perpetual form in
regard to the restraint on sale . 1
Now however the restriction of any sale afterwards of articles
manufactured during the currency of the Patent is effectively ensured
by the order commonly made for delivery up or destruction of in-
fringing articles. This being so, there is clearly no need for the
injunction in any respect to be in the form of a perpetual injunction.
It has been held that an injunction which was not stated to be
either expressly perpetual or expressly limited to the period of the
currency of the Plaintiff’s Patent must be interpreted to be for the
currency of the Patent only . 2
1 See page 780 below.
1 See Daw r. Eley L. R. 3 Eq. 496 at p. 906.
774
THE LAW OF PATENTS IN INDIA
[Cb. XVU
As to the form of the final injunction.
A final injunction in an infringement suit in British India is
commonly granted in the following form : — 3
And it is further ordered and decreed that an injunction be and the same
is hereby awarded against the Defendants restraining them, their respective ser-
vants and agents during the continuance of the Plaintiff’s Indian Letters Patent
No.' dated mentioned in the Plaint in this suit, from importing
into British India, indenting for, distributing, advertising, offering for sale,
selling, supplying, dealing in or otherwise using within British India goods
(stating the nature of the goods), not being goods manufactured by the Plaintiff
Co., or its licensees, manufactured according to or in the manner described in the
Specifications of the invention protected by the said Indian Letters Patent No.
or made according to or in any manner only colourably differing from the
same, and generally from infringing the rights of the Plaintiff Go. in respect of
the said Letters Patent.
Where certain only and not all claims are infringed.
Even if it be positively established at the hearing that the
Defendant has not infringed certain of the claims but only some and
not all, the Plaintiff will none the less be entitled to an injunction.
And such injunction will still be granted in the same general form
without being restricted to those claims only which have been shown
to have been infringed. 4
As to a stay of the injunction where the Defendant appeals.
In special circumstances an order that the injunction shall not
become operative until an appeal filed by the Defendant has been
decided, may be obtained. Thus in Leeds Forge Coy. Ltd: v.
Deighton’s Patent Flue and Tube Coy., Ltd.* on the ground that the
Defendant Company had a very large works employing something
like 70 men and the whole establishment would be stopped at once
and the men would have to be dismissed, if the injunction was not
stayed, the Court of first instance at the time of delivering judgment
made an order that the injunction should be suspended for a short
time up to a fixed-date to allow sufficient time to enable the Defendant
to present their Appeal and to apply to the Court of Appeal. Cozens
* The ordinary form in England is stated in Terrell to be as follows “That
the Defendants, their servants and agents be restrained from infringing the Plain-
tiff’s Letters Patent No. during the continuance thereof or any extension
thereof."
4 See Mcrgenthalcr Linotype Go. v. Intertype Ltd. (1926) 43 R.P.C. 239 (C.A.)
at p. 275.
* (1901) 18 B. P. G. 233 at p. 240.
Ch. XVII]
THE FINAL INJUNCTION
775
Hardy J. in adopting this course observed : — “I certainly do not feel
disposed to grant a stay which would probably, having regard to tho
state of business in the Court of Appeal, suspend the injunction for a
twelve-month. I do not think that would be right. The Court of
Appeal may think right to do it, or they may advance the appeal/’ In.
that case when the case came before the Court of Appeal afterwards,
an order was made by consent staying the injunction pending the
appeal on terms arranged between the parties.
So also in Bonnard v. London General Omnibus Limited 8 where
the appeal of the Plaintiffs’ was allowed and an injunction was
ordered by the Court of Appeal, the Appellants having intimated
that they were willing that the injunction should be stayed for a
reasonable time and in the event of an appeal to the House of Lords
that it should be stayed until the hearing of the appeal, the Court of
Appeal not only stayed the injunction, but made it clear that the
suspension of the injunction was meant to allow the Defendants
freedom pending the appeal to fit tho contrivances in question on
their buses and to put new buses so fitted on the Streets without
any restriction. The material portion of the order made in that
case was as follows : —
“This court doth order that the said judgment be reversed.
And it is ordered that the Defendants, The London General
Omnibus Company Limited, their servants and agents be restrained
from infringing the Letters Patent No. 24357 of 1912 in the State-
ment of claim mentioned. But this injunction is suspended until
the 21st day of December 1919. (Tho order then dealt with matters
relating to the Certificate and the Inquiry as to damages and Costs
and proceeded). But it is ordered that if on or before 21st of
December, 1919, the Defendants give Notice of Appeal to the House
of Lords from this order, the injunction be suspended until after
such Appeal shall have been heard by the House of Lords ” 7
But in Lanston Monotype Corporation Ltd.y. Martin J. Slattery 8
the suspension prayed for of the injunction was refused (on the
~ 6 (1919) 36. R. P. C. 307 at p. 325.
7 See also British Thomson- Houston Company Ltd . v. British Insolatcd and.
Helsby Cables Ltd . (1924). 41. R. P. C. 345 at p. 375 where there was at
the time of judgment, in the Court of first instance, a stay of the injunction
by consent on the terms that there would be a, stay for a fortnight and if the
Defendants within that time gave notice of appeal and paid £10,000 into Court,
then there should be a stay pending the appeal.
8 (1925) 42 R. P. C. 366 at p. 396.‘
770
THE LAW Or PATENTS IN INDIA [Cl. XVK
ground 1 that the Defendant was not himself a manufacturer and would
therefore not be grievously prejudiced by its operation pending the
appeal). And in Samuel Parker dt Coy., Ltd, v. Cocker Bros. Lid.* it
was held to the effect that In view of the absence of special reasons
the injunction would not be suspended during the pendency of any
appeal.
2. Damages.
As to the option of the Plaintiff to have either damages or an
account of profits.
In India, under the current Indian Patents and Designs Aot of
1911, a Plaintiff who is successful in an infringement suit has the
right at his option either to a decree for damages or to an account of
profits.
The right to damages he has on general principles as a conse-
quence of the infringement by a Defendant of a legal right of the
Plaintiff. See Davenport v. Rylands. 10
The right to an account is expressly given to him under Section
81 of the Indian Act. This section which is, word for word, the
same as Section 34 of the English Patents and Designs Act of 1907
as it existed prior to the amendment made therein in 1919, is as
follows : —
“In a suit for infringement of a patent, the Court may, on the
application of either party, make such order for an injunction, inspec-
tion or account, and impose snch terms and give snch directions res-
pecting the same and the proceedings thereon, as the Court may see
fit.”
The Plaintiff is bound before judgment to exercise his election
which of the two remedies, damages or an account of profits, he
wishes to have. See Betts v. Neilson 11 and see Fletcher Moulton at
pp. 193 and 194 (note z).
The position in England since the 1919 amendment is different ;
since nnder the current English Section 84 it is expressly provided
that a Plaintiff shall not be entitled in any case to an account of
profits : See also Terrell (8th edition 1934) at p. 430.
As to the distinction between damages and profits.
If the Plaintiff elects to have an account of profits, he will
then be considered as treating the Defendant, the wrongdoer, as his
• (1920) 46. B. P. C. 241.
* 8 (1865) L. B. 1. Eq. 302.
** (1866) LR.5H, L. 1.
<». XVBf] DAMAGES 777
Agent ; and against the Defendant on this basis he will be entitled
to all profits made by the Defendant in respect of the infringing
articles. On this basis the extent of the loss suffered by the
Plaintiff — or whether he has suffered any loss or not — will be
immaterial. All that matters is the extent of the profit made
by the Defendant.
And conversely if the Plaintiff elects to have damages, the
extent of the profits made by the Defendant — or whether he has
made any at all, or whether he has made a loss — will be immaterial.
All that then matters is the extent of the damages Buffered by the
Plaintiff . 12
As (o the circumstances in which a decree for damages may be
obtained.
Since, as already indicated, any infringement of a Patent is a
breach of a statutory and legal right, any infringement when
established will entitle the Plaintiff to a decree for damages : even
if only for nominal damages . 13
The extent of the damages recoverable will be governed by the
ordinary general principles of law and rules of causation as in non-
patent cases. See United Horse Shoe & Nail Coy., Ltd. v. Stewart
Co}*
As to the extent of the period before Suit over which damages or
profits may be claimed and calculated.
In British India the period over which damages or profits may
be claimed would' appear to be restricted to the period of three years
immediately preceding the date of the institution of the suit ; being
the period of limitation . 13
As to the measure of damages if the Plaintiff does not himself
manufacture.
The extent of the damages directly suffered by the Plaintiff by
*• (1888) 13 A. C. 401 or 5 E. P. C. 260 (H. L.) at page 267.
19 See Davenport v. Hylands- (1865) L. R. 1 Eq. 302.
14 (1888) 13. A. C. 401 (H.L.).
19 See page 702 above, and Article 40 and Article 89 of the Indian Limitation
Act (Act 9 of 1908). The period in England is six years see Terrell (8th edn : 1934)
p. 442 ; Fletcher Moulton p. 196 note (k) citing Cross ley v. Derby Qatt Light Co.
(1839). W. P. C. 119.
98
778 THE LAW OF PATENTS IN INDIA [Ch. XVD
reason of the infringement may differ according to whether he is or
is not himself a manufacturer.
In a case where the Plaintiff is not himself a manufacturer, it
will happen in most cases where the Plaintiff is at all in the position
of claiming any substantial damages, that he will have entered into
some agreements with some persons for licences and for the payment
to him, under suoh licences, of royalties. When this is the case,
damages will ordinarily be olaimed and granted on a calculation of
the amount of royalties the Plaintiff would have received if the
Defendant had paid royalties for all infringing articles dealt with.
As to the measure of damages if the Plaintiff is himself a
manufacturer.
In a case where the Plaintiff is himself a manufacturer, the
calculation of the proper amount of damages recoverable may be a
more intricate matter.
It has been held that the Plaintiff may recover in a proper case
both for loss of such manufacturing profits as he would have made, if
the Defendant had not sold the infringing goods, and the Plaintiff had
sold either the whole quantity in fact sold by the Defendant or such
a proportion of them as the Plaintiff taking all circumstances into
account might according to reasonable probability have sold ; and
that the Plaintiff may also in a proper case recover for loss due to
reduction of prices of the Plaintiff’s goods necessitated by the
competition o| the Defendant in the infringing articles.
As to the effect of a decree for damages in respect of the infringing
goods.
If the damages which have been decreed have been calculated
as they should be, so as to be suoh as to put the Plaintiff into the
same monetary position as that in which he would have been, if there
had been no infringement, and if the goods had been sold lawfully
under his Patent, then after such a decree any person subsequently
buying the goods in suit will be free to deal with them just as if they
had bought them lawfully from the Patentee himself. They will not
be liable on any claim for infringement for dealing with those goods
thereafter. See United Telephone Coy. v. Walker and Another 14 and
Peru v. Bibly.
»• (1887) 4. R. P. C. 63 and L. B. 3 Eq. 398. ~~
Ch. XVII]
ACCOUNT OF PROFITS
779
But in the last mentioned case it was also held that where the
Plaintiff had only recovered agreed damages on a basis of royalties
for annual hiring, any subsequent use by third parties after the
period for which royalties had been recovered would be an infringe-
ment.
3. Account of Profits :
For the reasons already indicated it may be found to be more
profitable for a Plaintiff to elect to have an account of profits
in a case where the Plaintiff is not manufacturing or trading
himself and the Defendant has established a profitable business
in the infringing articles.
It appears that it will be necessary to show that the profits
have been made out of the infringing articles. If the Defendant
could show that, if he had not used the Plaintiff’s patented article
there were available equally efficient and satisfactory and profit-
able other articles (apart from the Patent), which he might have
used or dealt in ; and that therefore his profits did not arise
directly out of the patented article ; it seems doubtful what, if any,
profits the Plaintiff will then be entitled to receive. Sec Siddell v.
Vickers Sons Co. Ltd . 11
4. Order for a reference to ascertain either
damages or profits, as the case may be :
As to the form of the order.
A common form of order in British India in directing a
Reference for an enquiry as to damages or for an account of profits
is as follows : —
And it is further ordered and decreed that the further hearing of this suit he
adjourned and that it he referred to the Registrar of this Court , icith liberty to him
to allocate the reference either to the Official Referee or the Assistant Referee of this
Courtj to take an account of the profits made by the said defendant — by importing ,
selling or otherwise dealing with the said goods made in infringement of the
Plaintiff Company’s said Letters Patent , and that the said defendant— do also
allow inspection of aU books of account, stock books and other papers and docu -
ments as the officer taking the said account shall direct.
As to inspection for the purposes of the Reference.
The Plaintiff is entitled to full discovery and full inspection as
if the issue arose in the suit itself, even though this will mean his
1T (1889) 6 R. P. C. 464 ; and see generally on the point Fletcher
Moulton at p. 195 ; in particular as to the position if the Plaintiff desires to prove
in the insolvency of the Defendant.
780 THE LAW OF PATENTS IN INDIA XW
seeing the Defendant’s books of account and requiring information,
as to the names of the Defendant’s customers . 18
As to a stay of an enquiry as to damages or of an account of profits
where the Defendant appeals.
In certain circumstances an order that the order for the
enquiry or the account, as the case may be, will not be operative,
until an appeal filed by the Defendant has been disposed of, may be
obtained.
And in Craig v. Doweling 19 ( a threats action ) a stay was so
granted. On the other hand in certain cases a stay has been refused.
The present practice of the Court of Appeal in the Calcutta
High Court is to incline to refuse to make any Order for a stay in
the absence of specially cogent reasons showing why the Defendant
will be grievously prejudiced by the Reference going on.
5. Order for delivery up or destruction of stocks.
As to the nature of the remedy. Additional to damages :
This remedy originated, it seems, as a subsidiary means of
making effective an order for an injunction granted in an infringe-
ment suit ; since such injunctions, it seems, were originally granted
in the form of perpetual injunctions restraining the Defendant for
all time from selling infringing goods made during the currency of
the Patent . 20
If the principle, previously noted as having been adopted in
Pessers Moody, Wraith and Gurr Ltd. v. Newell & Co.? 1 is correct,
that mere possession is not an infringing act, where the Defendant
does not intend to use or deal in the article until after the expiration
of the Plaintiff’s Patent, it is somewhat difficult to see why a
Defendant should not in some cases be entitled on the same
principle to keep or store the infringing articles until after the
expiration of the Plaintiff’s Patent. However in any infringement
suit in which a Plaintiff has succeeded in showing that there has been
*■ And see page 742 above.
*• (1908) 25 B. P. C. 1 at p. 9.
,0 See Terrell (8th edition : 1934) p. 445 citing Orossley v. Beverley 1.
W. P. 0. 119 ; also Seton Judgments 7th Edition at p. 630.
* 1 (1914). 31. R. P. C. 510 ; and see page 562 above.
Ch. XVH]
ORDER FOR DEUVERY UP
981
actual infringement, it appears that the Plaintiff is now regarded
as entitled in law to an order on the Defendant for delivery up or
destruction of the infringing articles in all cases.
This remedy has now, it appears, come to be one of the reliefs
to which a Plaintiff is entitled in any infringement suit in which he
succeeds.
This remedy is additional to, and not in any sense an alternative
to, the remedy for damages and the remedy of an injunction. Thus
it has been held in England that the value of the articles delivered
up is not to be deducted from the damages decreed . 22
Where the infringing parts are severable from the rest of the
apparatus dealt in, the modern practice in England is to restrict the
order for delivery up of infringing articles to the delivery up of the
infringing parts only . 23
Where the Patent is for a combination so that the nse of the
parts separately is no infringement, there will be no order for delivery
up, but merely that the parts in question be dismantled from the
combination . 24
As to the form of the Order :
The order is usually made in such a form as to give the
Defendant the choice of delivery up or destruction . 25
The order will usually also include a direction on the Defendant
to make discovery upon oath stating what infringing goods are in
his possession . 26
As to a stay of the order for delivery up where Defendant appeals.
In view of the inconvenience which will have been caused to
a Defendant if he is made to deliver up all infringing articles
during the pendency of an appeal in a case where he afterwards
succeeds on his appeal, it is not uncommon for an order to be
obtained that the order for delivery up shall be inoperative until
after the decision of an appeal filed by the Defendant . 27
** United Telephone Coy. y. Walker (1987) 4 R. P. C. 63.
** See Fletcher Moulton p. 198.
• 4 Ibid.
** Bee British Westinghouse Mnfy. Co. Ltd. v. Electrical Coy. (1911) 28 R.
P. 0. 517 at p. 530.
*• See British Thomson-Houxton Coy. Ltd. v. Irradiant Lamp Works Ltd.
(1923) 40 R. P. C. 243.
,r See Lancashire Explosives Co. v. Roburite Explosives Co. (1895)
12R.P.C.470. 0
782
THE LAW OF PATENTS IN INDIA
[Clu XVII
6. Certificate of Validity :
Aa to the nature of this relief and the effect of a Certificate.
By Section 32 of the Indian Patents and Designs Act it is
provided as follows : —
“In a suit for infringement of a Patent the Court may certify
that the validity of the Patent came in question, and if the Court bo
certifies, then in any subsequent suit in that Court for infringement
of the same Patent the Plaintiff, on obtaining a final order or judg-
ment in his favour, shall, unless the Court trying the suit otherwise
directs, have his full costs, charges and expenses of and incidental
to the said suit properly incurred.”
The wording of thiB Section corresponds with that of Section
35 of the English Patents and Designs Act of 1907 except that the
words in the English Act, “as between solicitor and client”, do not
appear in the Indian Act. The wording of the English Sec. 85 under
the current English Patents and Designs Act 1907-1932 is also to
the same effect as the English Act of 1907, except that it has inclu-
ded in it an additional provision by which it is expressly made clear
that in a case where the validity of any one claim has come in
question, the Court may grant a certificate restricted to a single claim
or to certain specific claims. Sec. 32 of the current Indian Act has
no such specific provision. It is submitted nevertheless that it will
be open to a Court in its discretion to issue a certificate restricted
to certain specific claims, if it thinks fit, even under the Indian Act. 28
It is submitted also that the general term "full costs of and
incidental to the said suit properly incurred” will cover costs as
between Attorney and Client under the Indian Act also.
It is to be observed that the certificate above referred to in the
Act, though commonly referred to as a “certificate of validity”, is
only improperly so termed ; being only in truth a certificate that the
"validity of the Patent has onoe previously been questioned”. It is
** For authority that this will be so, see Badisehe Anilin und Soda Fabrik v.
La Sooiete Chimiques des Usenet du Rhone and another (1897) 14 R. P. G. 875, a
case under the English Act of 1907 prior to the new existing English amendment.
Ch. XVn] CERTIFICATE OF VALIDITY QUESTIONED
783
not in any sense a certificate such as to declare to all the world that
the Patent is valid . 29
The certificate cannot be treated in any way as a piece of paper
having the effect of a judgment in rent, which the Patentee may
wave in the face of any person whom the Patentee thereafter claims
to be an infringer, so as to preclude such person from questioning
the validity in law of the Patentee’s Patent. It is a certificate which
affects nothing except, in certain circumstances, the costB of a subse-
quent infringement suit in the event of the Patentee having to bring
such a suit either against the same or any other person . 30
This certificate does not moreover affect in any way the costs
of the suit in which it is granted . 31
As to the Practice regarding the grant of the certificate.
The certificate is only granted in practice where the Patcnteo
has succeeded on the issue of the validity of his Patent. Though,
as already observed, it may be enough that he has only succeeded as
to this in respect of one, or certain, and not all, of the claims of his
specification. If the issue of validity has been tried and decided in
favour of the Plaintiff, it would seem that he is none the less entitled
to a certificate even though he may have failed to succeed on other
issues, or, for example, may have failed finally in the suit by reason
of having failed on the issue of infringement . 32
According to the English practice the Plaintiff will in the
subsequent suit be given his costs as between Solicitor and Client as
** It has been directly decided in England that an action does not lio for a
declaration that a Patent is invalid : see North- Eastern Marina Engineering Co.
v. Ijceth Forge Co. (1906) 23 It. P. C. 529 (0. A.) ; Traction Corpn. v. Bennett
('.908) 25 R.P.C. 819 at page 822 ; Killen v. MacMillan (1932) 49 R. P. 0. 258 at
p. 260.
*• That this is clear iB shown by the fact that in one case it appears that a
certificate that the validity of the Patent came in question was granted (to the
Plaintiff) although the Patent was held invalid, but the course adopted in that
ease has never been followed : Bee Haslam Co. v. Hall (1888) 5 R.P.C. 1 : but see
Acetylene Illuminating Coy. Ltd. v. United Alkali Coy Ltd. (1902) 19 R. P.
C. 213.
** Concerning Certificates of Particulars of Breaches and Certificates of
Particulars of Objections which, if they were to be granted, would affect the costa
of the suit in which they were granted, see further, below, under ‘‘Costs'’.
•* See Fletcher -Motdton (1913 edn.) p. 200.
784 THE LAW OF PATENTS IN INDIA [Cfc. XVH
A result of the certificate obtained in the previous suit, even in cases
where the issues in the second suit may be different from those in
the first, and even in cases where in the second suit infringement
only is in issue without any challenge to the validity of the Patent . 33
It has been held that the costs of an appeal in the original
suit in whioh the certificate is granted are unaffected by such
certificate . 34
It has also been held in England that the costs of a counter-
claim for revocation (which in England may be agitated in the
same suit as that in which the certificate is granted) are un-
affected by the certificate . 35
It has been held that the propriety of the grant of the certi-
ficate in one suit cannot be challenged in another . 33
As to eases where the Defendant does not appear, or abandons
the defence.
The question frequently arises (as to the meaning of the words
“came in question” in the section) whether a Plaintiff is entitled to
thiB certificate in an undefended suit ; or in a suit in which the
Defendant abandons the defence . 37
It appears to be the modern practice in England, on the
Plaintiff’s calling formal evidence to prove the validity of his Patent
in a case where the Defendant does not appear, for the Court to
grant the Certificate that the validity of the Patent came in ques-
tion. See Descombes and Arondel v. Lestor and Parton . 3 *
** See Fletcher Moulton p. 201 note (s).
04 Incandescent (las lAght Coy. Ltd. v. Dc Mare Incandescent Qas Light
System Ltd. (1896) 13 K. P. C. 559 atp. 579 (C.A.).
** British Vacuum Cleaner Coy. V. L. <S> S. W. Rltcy Coy. (1910) 27 R. P. C.
649 atp; 670.
** Peter Pilkington I Ad. v. Massey (1901) 21. R. P. C. 697.
,r There appears formerly to hare been some divergence in the decided
cases as to the earlier English practioe. See Fletcher Moulton p. 190 where a list
ef the English cases complete up to the date of the publication of that work
(1913) is given.
*' (1931) 48. R. P. C. 473. See also British Thomson- Houston Coy. Ltd. v.
Corona Ijanip Works Ltd. (1922) 39 R. P. C. 49 at p. 93 where the question of
"the grant ef a certificate and its consequences were fully discussed;
783
Ch. XVU] COSTS
As to the Discretion of the Court.
It is to be observed from the inclusion in the section of the
words “unless the Court trying the suit (that is the subsequent suit)
otherwise directs”, that even where a certificate may have been
obtained in a previous suit, the Court hearing the subsequent suit
still has a discretion in the matter ; and may decide in spite of the
previous certificate not to grant to the Plaintiff his costs as between
Attorney and Client.
Therefore if the subsequent suit turns out to be the really
substantial suit, and not the earlier suit in which the certificate
was granted, it will always be open to the Court in exercising its
discretion to refuse to grant to the Plaintiff his costs as between
Attorney and Client in spite of any previous certificate . 39
Appeal.
It is submitted that the Court of Appeal will bo entitled to
grant or refuse the certificate in its discretion in accordance with
such decision as it may come to, irrespective of the order of the
Court below : just as it is entitled generally to exercise its dis-
cretion afresh as to its orders in other respects regarding costs
in general.
It has been held in England that there is no appeal against
the grant of the certificate alone . 40
7. Costs.
Generally.
The costs of a suit for infringement in British India will be
disposed of according to the general principles relating to costs in
all suits . 41
,n See British Thomson- Houston Coy . Ltd . v. Corona Lamp Works Ltd .
(1922) 39 R. P. C. 49 at p. 93, where Solicitor and Client costs were refused
in spite of a previous certificate in a case where such certificate had been granted
in a suit in which a defence had been put in but the Defendants at the hearing
had not appeared ; also Auster Ltd. v. Perfccta Motor Equipments Ltd. (1921)
41 R. P. C. 482 at p. 498.
40 Haslam Co. v. Halt. (2) (1888) 5 R. P. C. 144.
4 1 In England there are certain special provisions contained in Order 571 A,
Rule 22 of the English Rules of the Supreme Court, regarding Certificates as to
Particulars of Breaches to be obtained by Plaintiffs and Certificates as to Parti-
99
7S6
THE LAW 01 * PATENTS IN INDIA
tCh. XVl!
Where a Defendant has offered before suit an undertaking not
to infringci this docs not disentitle the Plaintiff, ordinarily, from his
right still to go to the Court to obtain a formal injunction in the
form of a decree. But in a recent case, Calico Printers v. D. N.
Mulcerjee (a design case), whero the Defendant had offered what was
held to be an unconditional undertaking before the hearing, it was
held by Lort Williams J. that the Plaintiff should not have gono on
with the suit, but should have asked for judgment in the form of an
order embodying the undertaking ; and in that case, while an injunc-
tion wub granted in favour of the Plaintiff, the costs after a certain
date were ordered to be paid by the Plaintiff. 42
As to costs as between Attorney and Client.
An order for costs on a scale to include all costs actually
properly incurred between Attorney and Client may be obtained by
a successful Plaintiff, ns already indicated, in cases where he has in
a previous suit obtained a certificate of validity questioned under
Sec. 32.
calars ot Objections to be obtained by Defendants, and to the effect that a party
cannot recover any costs on any issue for which he has not obtained such a
Certificate. There is no provision for the obtaining of any such Certificates in
British India, nor, naturally, any prohibition against recovery of costs if such
certificates be net obtained.
4 » (1996). 40. C. W. N. 938.
Oh. XVII] PROCEEDINGS SUBSEQUENT TO DECREE
787
PART VI
FURTHER PROCEEDINGS SUBSEQUENT TO THE
DECREE IN THE INFRINGEMENT SUIT.
1. Application for stay of execution.
Any application for stay of execution , whether made to the
Court of first instance at the time judgment i9 delivered, or whether
made to the Court of Appeal thereafter! will be, generally Bpeaking
governed by the same principles and rules a9 in any non-patent suit.
Terms as to the furnishing of security or otherwise may be imposed
as a condition of the grant of such a stay. Similar terms may also
be imposed on the Defendant.
In regard to a stay of an order for an injunction, or of an
order for inquiry as to damages, or for a reference for an account of
profits, or of an order for delivery up or destruction of infringing
articles certain observations have already been made earlier in part V
of this chapter, to which reference may be made as necessary. 1
2. Appeal.
The right of either party to appeal, and the procedure in con-
nection with the disposal of any Appeal which may be filed, will, in
all general respects, be the same as in any non-patent suit ; and
calls here for no further comment.
3. Execution proceedings.
In the event of its becoming necessary to take legal proceedings
in execution of the decree in order to compel compliance therewith
on the part of the opposite party, such proceedings in execution are in
all respects the same as in any non-patent suit, being governed by
the rules laid down in the Code of Civil Procedure. They call hero
for no further comment.
4. Contempt proceedings by motion for breach of an
injunction granted in an infringement suit.
If in an infringement suit the Plaintiff has obtained an injunc-
tion restraining the Defendant from infringing the Plaintiff's Patent,
and if thereafter the Defendant in breach of that injunction again
infringes the Patent, the proper course for the Plaintiff will be, not
1 Bee pages 774, 780, and 781 above,
788
THE LAW OF PATENTS IN INDIA
[Ch. XVII
to file a fresh suit for infringement, but to institute proceedings for
contempt on account of the breach of the injunction already
obtained . 2
On such motion further damages may also be asked for . 3
As to eases where the second mode of infringement is not the
same as the original infringement which gave rise to the
injunction.
It will be immaterial whether the acts complained of as a
Contempt of Court are the same or different from the acts complain-
ed of in the original suit. The only question will be whether the
acts complained of as being a Contempt of Court are a breach of the
injunction granted or not.
As to proceedings against a person who was not a party to the
original suit.
Where in a suit for infringement an injunction has been issued
against the Defendant and against the servants and agents of the
Defendant, proceedings by way of motion to commit for Contempt
of Court may in certain circumstances be successfully brought even
against a person who was not the Defendant and was not himself a
party to the original suit in which the injunction was granted ; pro-
vided it is clearly and positively established that such a person is a
servant or agent of the person injuncted, and that he has himself
had knowledge of the existence of the injunction, and in spite of that
knowledge has aided and abetted in the breach of the injunction . 4
v
As to the liability in contempt of Directors personally.
In the case of a breach of an injunction by a limited company
it has been held in the English cases that an order for sequestration
may be issued as well as orders for committal or attachment against
the Directors . 5
9 See Txincashire Explosives Coy . Ltd. v. The Roburite Explosives Coy. Ltd.
(1896) 13 R. P. 0. 429. at pp. 440 and 441.
8 Ibid at p. 433.
4 See Incandescent Qas lAyht Co. v. Thomas SI nee (1900) 17. R. P. C. 173
(C. A.) at pp. 174-177 ; also Seaward v. Paterson (1897) 1 ch. 545 also Dulyeon v.
Thomson (1877) 3 A.C. 34 H. L. and see Oswald on Cotifcmpf, Committal and
Attachment (3rd. edn.) at p. 106.
5 See Spencer v. The Ancoats Vale Rubber Coy . Ltd. (1889) 6 R. P. C. 46 :
llattersley & Sons Ltd. v. Hodgson Ltd. (1903) 22 R.P.C. 229. Where it is a
Ch. XVII]
CONTEMPT PROCEEDINGS
789
As to cases where the Patent has been amended since the
injunction.
It would seem that under the current Indian Act, at least, an
application by motion to commit for contempt will not lie in a case
where the Patent has been amended since the injunction. It has
been held that in truth the amendment in such a case dissolves the
injunction . 6
As to the form of the order to be made.
Not infrequently the Court merely makes an order against
the Defendant to pay the costs of the Motion and to make monetary
compensation to the Plaintiff.
An order for committal will only be made in cases of wilful
disobedience of the order of the Court embodied in the injunction . 7
company which has disobeyed the injunction obtained against it, the
Plaintiff, if he prefers to take the remedy open to him by way of proceeding
in execution rather than, or alternatively to, contempt proceedings, may
enforce the injunction in execution by attachment of the company’s property
or by detention in the civil prison of the Directors, or both, under the provisions
of Order 21, Rule 32 (2) of the Civil Procedure Code.
® See Dudjeon v. Thomson (1877) 3 A. C. 34. The position under the current
English Patents and Designs Act 1007-10 12 appears to be different owing to the
amendment of the English Sections 21 (7) and 32A, see Terrell (8th cdn. 1934)
p. 437.
7 0./. also Meters Ltd . v. Metropolitan Has Meters (1907) 24 R, P. 0. 500.
CHAPTER XVIII
OTHER REMEDIES— THE POWER OF A HIGH COURT
IN RESPECT OF THE CONTROLLER OF PATENTS—
WRIT OF PROHIBITION— WRIT OF CERTIORARI
—WRIT OF MANDAMUS OR MANDATORY
INJUNCTION— SPECIFIC RELIEF ACT-
INJUNCTION— COSTS.
Other remedies : their nature.
In respect of proceedings before the Controller of Patents it
may be, in certain special circumstances, that a person aggrieved by
an a<jt or omission or decision of the Controller, may have a right to
obtain redress by way of proceedings in a High Court in connection
with one or other of the Writs known as the “high prerogative
writs”, or by obtaining a mandatory injunction under the Indian
Specific Relief Act (Act I of 1877).
Common Law as to the High Prerogative Writs.
1 he well known high prerogative writs are in active use in the
United Kingdom for the purpose of obtaining justice where this
cannot be otherwise adequately obtained. Of such writs, the writ of
Habeas Corpus and the Writ of Quo Warranto have no connection
with the matters relating to Patents, with which this work is con-
cerned ; but the Writ of Certiorari, the Writ of Prohibition and
the Writ of Mandamus is, each one, a remedy to which resort has in
various circumstances been had in England in connection with the
administration of the Patent system.
The Nature of the Jurisdiction.
Broadly speaking the object of such writs is to prevent the
doing of injustice or to ensure the performance of justice where
other remedies fail. Such writs are issued upon cause shown, where
the ordinary legal remedies are inapplicable or inadequate. The
right to such writs exists in the United Kingdom at Common Law
independently of any Statute. 1
See Hafshury (Hailsham edn. Art. 1202) ; Ex Parte Basset (18S4) 6. Q.B. 481.
€h. XVlllJ HIGH PREROGATIVE WRITS 7dl
Wide exercise of the Jurisdiction to issue the writs.
In a case where the application was for a Writ of Mandamus
the following observations were made by Martin B
“Instead of being astute to discover reasons for not applying
this great constitutional remedy for error and misgovernment, we
think it our duty to be vigilant to apply it in every case to which,
by any reasonable construction, it can be mado applicable”.
And in the more recent case of Rex v. North Worcestershire
Assessment Committee , ex parte Hadley , 3 where the application was
for a Writ of Prohibition the following observations in equally
emphatic terms were mado by Lord Ilewart C. J. : —
“ In 1882 — Brett. L. J. (as he then was), in Reg. v.
Local Government Hoard* said I think I am entitled to say this, that
my view of the power of prohibition at the present day is that the
Court should not be chary of exercising it, and that wherever the
legislature entrusts to any body of persons other than to the superior
Courts the power of imposing an obligation upon individuals, the
Courts ought to exercise as widely as they can the power of control-
ling those bodies of persons, if those persons admittedly attempt to
exercise powers beyond the powers given to them by Act of Parlia-
ment. It is perhaps an under-statement to say that nothing has
happened between the year 1882 and the year 1921) to make thoso
observations of Brett L. J. less apt, less well founded, or less desir-
able to-day.”
It is submitted that this principle of wide application is appli-
cable to all such prerogative writs without distinction.
The nature of and differences between these Writs.
It has been said, in effect, of the Writ of Prohibition that its use
is to prevent the continuance of proceedings in the absence of, or
in excess of, jurisdiction, or in contravention of the laws of the land :
whether in contravention of some statute or in contravention of the
principles of the common law. 5
* Rochester Corporation v. R. (1858) E. U. & E. 1024 at p. 1033.
» (1929) 2 K. B. 39? at p. 405.
4 (1882) 10. Q. B. D. 309 at p. 321 .
* Bee IlaUbury (Hailsham edn s) Arts. 1394 & 1397.
792
THE LAW OF PATENTS IN INDIA
[Ch. XVIII
It has been said in effect of the Writ of Certiorari that its use
is to remove the proceedings of inferior courts or judicial bodies for
the purpose of quashing such proceedings.®
At the present day for practical purposes the only difference
between a Writ of Prohibition and a Writ of Certiorari is one in
relation to time. It was observed in one case by Atkin L. J. : —
“The matter comes before us upon rules for Writs of Prohi-
bition and Certiorari which have been discharged by the
Divisional Court. Both writs arc of great antiquity
forming part of the process by which the King’s Courts
restrained courts of inferior jurisdiction from exceeding
their powers. Prohibition restrains the tribunal from
proceeding further in excess of jurisdiction ; Certiorari
requires the record or the order of the court to be sent
up to the King’s Bench Division, to have its legality
inquired into, and, if necessary, to have the order
quashed”. “ I can see no difference in principle
between certiorari and prohibition, except that the latter
may be invoked at an earlier stage. If the proceedings
establish that the body complained of is exceeding its
jurisdiction by entertaining matters, which would result
in its final decision being subject to being brought up and
quashed by certiorari, I think that prohibition will lie to
restrain it from so exceeding its jurisdiction/’ 7
In regard to the Writ of Mandamus, in England it has been said
that its purpose is “to supply defects of justice ..to the end that
justice may be done in all cases where there is a specific legal right
and no specific legal remedy for enforcing such right ” 8
In British India the rights of any person to a remedy corres-
ponding to the remedy by Writ of Mandamus in the United King-
dom has been codified in the Indian Specific Relief Act : under
Section 45.
* Bee llahhury (Hailsham Edn.) Art. 1431.
7 1924 I. K. 11. 171 at p. 204. Bee also the judgment of Ban kes L. J. in the
same case. See also the King v. Minister of Health , ex parte Dark 1929 I.K.B. 619.
at p. 627.
* See Hahbury (Hailsham Edn.) Art. 1269.
Ch. XVIII] POWER OB' COURTS IN BRITISH INDIA
For this reason it is unnecessary here further to consider the
English remedy by Writ of Mandamus at Common Law* since a
Writ of Mandamus apart from such injunction as may be obtained
under the Indian Specific Relief Act, is not obtainable in British
India. As, on the other hand, a Writ of Prohibition or a Writ of
Certiorari are under certain circumstances obtainable in British
India similarly as they are obtainable in the United Kingdom, it will
be useful, in order to appreciate the legal position in British India in
regard to these writs, to note the grounds on which it has been held
in the United Kingdom that these two writs arc obtainable.
First it will be convenient to consider the origin of the power
now possessed by each of the High Courts of Calcutta, Madras and
Bombay to issue the High Prerogative Writs of Prohibition and of
Certiorari.
Power of certain Courts in British India to issue a Writ of Prohibi-
tion or a Writ of Certiorari.
It has long been established that a Writ of Prohibition or a
Writ of Cortiorari may in some circumstances be issued by some
Courts in British India. The jurisdiction of certain of the High
Courts to issue these Writs has been tested and is clearly established.
Whether every High Court, including those recently establish*
ed, has such jurisdiction may be a matter of some doubt.
It may be that no Court other than a High Court, will
have any express jurisdiction or power to issue such Writs : and
that a District Court has no jurisdiction or power in this respect.
For present purposes it is unnecessary to go into the question how
far the principles of the English Common Law may be administered
by a District Court, in a case heard before such Court, as being part
of the “Justice, Equity, and Good Conscience,” which a District
Court administers; or how far and in what manner the prerogative of
the Crown will be enforced by a District Court. The observations
which follow relate primarily to the High Court of Calcutta, where,
by reason of its geographical position, any proceedings for the issue
of either of the Writs now under discussion may normally be
expected to be instituted in cases relating to Patent matters.
The High Courts of Madras and Bombay have precisely similar
powers in cases whore they have the requisite local jurisdiction*
100
&4 TiIe LaW of patents in India [ci». xvih
The Calcutta High Court.
(i) By Section 13 of the East India Company Act of 1772
(13 Geo. Ill, c. 63) powers were granted to the Supreme Court at
Calcutta as follows : —
“Be it therefore enacted by the authority aforesaid that it shall
and may be lawful for His Majesty, by Charter or Letters Patent
under the Great Seal of Great Britain, to erect and establish a
Supreme Court of Judicature at Port William aforesaid and the
same Court is hereby declared to have full power and authority to
exercise and perform all Civil, Criminal, Admiralty and Ecclesiastical
jurisdiction and (etc. etc.) and to do all such other things as shall
be found necessary for the Administration of Justice and the duo
execution of all or any of the Powers which by the said Charter shall,
or may be granted and committed to the said Court”.
(ii) Then by Clause 4 and Clause 21 of the Charter of 1774
which followed the said Act, being the Charter Establishing the
Supreme Court of Calcutta, it was expressly provided as follows : —
Clause 4.
“And it is our further will and pleasure that the said Chief
Justice and the said Puisne Justices shall severally and respective-
ly have such jurisdiction and authority as our Justices of our
Court of King’s Bench have and may lawfully exercise within that
part of Great Britain called England, by the common law thereof”.
Clause 21. \
“And to the end that the said Court of Requests, and the said
Court of Quarter Sessions, erected and established, at Fort William
in Bengal, by the said charter of our said Royal Grandfather made
tho twenty-sixth year of his reign, and the Justices, Sheriffs, and
other Magistrates thereby appointed for the said districts, may
better answer the ends of their respective institutions, and act more
conformably to law and justice, it is our further will and pleasure,
and we do hereby further grant, ordain, and establish, that all and
every the said Courts and Magistrates shall be subject to the order
and control of the said Supreme Court of Judicature at Port William
in Bengal, in such sort, manner, and form, as the inferior Courts and
Magistrates of, and in that part of Great Britain called England are,
by law, subject to the order and control . of our Court of King's
Ch. XVmi THE CALCUTTA HIGH COURT W
Bench ; to which end, the said Supreme Court of Judicature, at
Fort William in Bengal, is hereby empowered and authorized to
award and issue a writ or writs of Mandamus, Certiorari, Procer
dendo, or error, to be prepared in manner above mentioned, and
directed to such Courts or Magistrates as the case may require and
to punish any contempt of a wilful disobedience thereunto by fino
and imprisonment”.
This Charter read with the Act of 1772 makes it clear beyond
doubt that the old Supreme Court had power to issue writs of Prohi-
bition and Certiorari. The next question then is whether and how
that power has been transferred to or inherited by the present
High Court.
(iii) The material provision transferring the power of the
Supreme Court to the High Court, when the Calcutta High Court
was established in 1S61, is to be found in Section 9 of tho Indian
High Courts Act of 1861 (24 & 25 Viet. c. 104) which is worded
as follows : — “and the High Court to be established in each
Presidency shall have and exercise all jurisdiction and every power
and authority whatsoever in any manner vested in any of tho Courts
in the same Presidency abolished under this Act at the time of tho
abolition of such last mentioned courts.”
It is to be noted that nothing could be clearer than this for
the purpose of transferring the powers of the abolished Supremo
Court. These same powers have been continued to be given to the
High Court of Calcutta in all material subsequent provisions.
(iv) In the Letters Patent of 1865, which followed on the Act
of 1861, the reference to tho exercise of “its original civil jurisdic-
tion” can only mean that jurisdiction which has been conferred upon
it prior to 1865 to the extent already mentioned.
(v) Then in 1915 when certain provisions as to the High
Courts were embodied in the Government of India Act of 1915
(5 & 6 Geo. V. c. 61) the same powers were continued as before : it
being expressly provided under Section 106(1) as follows : —
“The several High Courts have all such jurisdiction
powers and authority as arc vested in those courts rcs| actively at
the commencement of the Act.”
796
THE LAW OP PATENTS IN INDIA
:[Ch. XVjn
And (hat is the position at the present day. From what has
been said, it is thus clear beyond doubt; that the Calcutta High
Court to-day has by virtue of the transfer of the powers to it from
the old Supreme Court, precisely the same power and. jurisdiction to
issue a Writ of Prohibition or a Writ of Certiorari as the Court of
the King’s Bench Division has in London.
The Madras High Court.
Similar provisions are applicable in the case of the Madras
High Court. The material chain of enactments being the following :
(i) Government of India Act of 1800 (39 & 40 Geo. Ill, c. 79)
(Providing for the establishment of a Supreme Court at Madras
with powers equal to those of the Supreme Court at Fort William
in Bengal).
(ii) Letters Patent dated 26th December 1800. (Establishing
tho Supreme Court at Madras.)
(iii) Indian High Courts Act of 1861 (24 & 25 Viet. c. 104).
(Section 9) (whereby tho High Court of Madras inherited the juris-
diction of tho Supreme Court at Madras.)
(iv) Letters Patent of the High Court of Madras of 1865.
(v) Government of India Act of 1915. (5 & 6 Geo. 5. c. 61)
(Section 106(1)) (Repealing the High Courts Act but continuing the
existing power of the Madras High Court.)' 1
Indian cases showing the existence of this jurisdiction.
In tho case of Nuncio Lull Bose v. Corporation of Calcutta 10
* The question of the immunity of His Excellency the Governor to the pro-
cess of these High Prerogative Writs, which immunity was originally created by
the East India Company Act of 1780 (21 Geo. Ill, c. 70), restricting — as a result
of the clash between the executive and the judiciary in Calcutta— the plenary
powers formerly granted to the Supreme Court at Calcutta, and the precise terms
of Clause 4 of tho letters Patent dated 25th March 1774 of the Supreme Court
at Calcutta, by which those plenary powers had been granted, and the terms of
Section 18 of the East India Company Act of 1772 (13 Goo. Ill, c, 63) which
preceded the issue of the Letters Patent, though the same immunity still exists
both in regard to the Calcutta High Court and in regard to the Madras High
Court (the powers of the Supreme Court of Madras having been created by
reference to those of the Calcutta Supreme Court), is for present purposes
immaterial.
(1885) 11. Cal. 275.
»o
Ch. XVDI] SPHERE OF JURISDICTION .797
the following definite pronouncement was made by Garth C. J. (at
page 278) in regard to the issue of a writ of certiorari : —
“The authority of this Court to remove the proceedings of
inferior courts in the exercise of their judicial functions is un-
' doubted. It is an authority derived from the old Supreme Court
and is similar to that which was exercised by the Court of Queen’s
Bench in England ; and if the Commissioners (i.c. of the Corporation
of Calcutta) in this case were exceeding their jurisdiction in making
an assessment, it seems clear that we have the power to quash it
upon certiorari”. 11
. And in the recent Calcutta case of hi re National Carbon Co.
Inc. 12 it was similarly held by Panckridge J. that the Calcutta High
Court has power to issue a Writ of Prohibition or a Writ of
Certiorari in a proper case.
It may be convenient here to note certnin references to a line
of Madras decisions culminating in certain recent cases, where it was
similarly held that the Madras High Court had the same power and
jurisdiction to issue a Writ of Prohibition or a Writ of Certiorari :
and in which the nature of such jurisdiction and tho grounds upon
which suoh writs should be issued were discussed. 13
Local extent of the jurisdiction of a High Court in the matter of
a Writ of Certiorari or Prohibition.
It has been held that the jurisdiction of a High Court to issue
a Writ of Certiorari or Prohibition is not restricted to the locality
1 1 Bee also ibid at p. 282.
11 (1934) 38. C. W. N. 729.
11 i.e. R. S. Naidu v. J. Ramicr (1920) 51. M. L. J. 701 ; Penny onda Ven kata-
rat nam v. The Secretary of State for India in Council and other h (1930) 53. Mail.
979 ; Venkata Navas im ho Rao Bahadur v. The Municipal Council of Nara -
saraopet . (1931) 00. Mad. L. J. 260 (at 201) ; Muniswami Ohetty v. The Bmrd of
Revenue, Ixind Revenue and Settlement, Madras and the Collector of Chittoor.
(1931) 61. M. L. J. 479 at p. 487 ; G or indas /ratal Pillai v. Hawaii nyasteami Pillai.
(1931) 62. M. L. J. 644 ; (1932) 55. Mad. 942 at p. 948 ; Shanmuyar Mudaliar v.
Suhharaya Mudaliar. (1932) 63. M. L. J. 932 ; Sri Sri Sri Rathmmala Patta-
mahadcci Zemindar ini of Mandasa v. The Ryots of the Mandasa Zamindari.
(1933) 56. Mad. 579 ; Mahomed Asan Maracair v. Bijli Sahib Bahadur. (1934)
66. M. L. J. 367 ; Sankaranarayana Pillai v. Ahmeil Mi ran Sahib. (193-1) 66.
W.L.J.601.
798
THE LAW OF PATENTS IN INDIA
[ch. xvm
within the limits of its ordinary original civil jurisdiction : but that
the jurisdiction of the High Court in the matter of such a writ
extends over all inferior tribunals amenable to its authority . 14
Circumstances in which the writs may be issued.
The writs will only issue under the following conditions
(i) Where the body against which the writ is sought is such
that it may properly be termed a judicial body.
(ii) Where such body has acted without, or in excess of, its
jurisdiction.
(iii) Where there is no other sufficiently adequate remedy.
(iv) Where the issue of the writ will constitute a remedy
which will be effective.
Prohibition or Certiorari— A Judicial Body.
The Writs of Prohibition or Certiorari can only be issued on
a judicial body.
The writs will not issue against a body which is not a Court
or judicial tribunal in any legal sense. And it is immaterial that
the body may without lawful authority purport to act as a Court :
the writs will not issue to a "pretended” Court . 15
Hut “wherever any body of persons having legal authority to
determine questions affecting the rights of subjects and having the
duty to act judicially, act in excess of their legal authority they
arc subject to the controlling jurisdiction of the King’s Bench
Division exercised in the writ” (i.e. of Prohibition ). 16
As to the nature of the bodies against whom a writ of Prohibi-
tion or Certiorari may be issued the matter has been fully discussed
in a line of rocent English Cases. The point was fully gone into in
the last mentioned case Hex v. Electricity Commissioners 17 where the
law on the subject after a full consideration of previous cases was
t4 See Venlvlaratnamy. Secretary of State for India. (1930) 53. Madras 979
at p. 999.
** Sec lie Cl I fiord amt O’Stdlirau 1921. 2. A. C. 570; It. v. Maguire anti
(y Shall (1923) 2. 1. It. 58 ; and see Hahlmry (Hnilsham Edn.) Art. 1407.
10 R. v. Electricity Commissioners 1924 1. K. B. 171.
*» 1924 1 K. B. 171 at p. 192.
Ch. XVlllj
ON A JUDICIAL BODY
799
clearly enunciated by Baukos L. J. in the following passage of his
judgment : —
“There can, of course, be no exact precedent, as the Electricity
Commissioners are a body of quite recent creation. It has, however,
always been the boast of our common law that it will, whenever
possible, and where necessary, apply existing principles to new sets
of circumstances. A study of the decisions of the Courts in relation
to writs of prohibition illustrates how true this is. In the case of
In re Clifford and & Sullivan 18 the Lord Chancellor quotes with app-
roval the description of a writ of prohibition given in Short, and
Mellor 1 ” as “a judicial writ issuing out of a Court of superior juris-
diction and directed to nn inferior Court for the purpose of prevent-
ing the inferior from usurping a jurisdiction with which it is not
legally vested, or, in other words, to compel Courts entrusted with
judicial duties to keep within the limits of thoir jurisdiction. ,,
Originally no doubt the writ was issued only to inferior Courts
using that expression in the ordinary meaning of the word “Court.”
As statutory bodies were brought into existence exorcising legal
jurisdiction, so the issuo of the writ came to be extended to such
bodies. There are numerous instances of this in the books, com-
mencing in quite early times. In the case of Hex v. Inhabitants in
Glamorganshire - 0 the Court expressed the general opinion that it
would examine the proceedings of all jurisdictions erected by Act
of Parliament, and if under pretence of such an Act they proceeded
to encroach jurisdiction to themselves greater than the Act warrants
the Court could send a certiorari to them to have their proceedings
returned to the Court, to the end that the Court might see that they
keep themselves within their jurisdiction, and if they exceed it to
restrain them. It would appear from the judgments in In re Yslra -
dgunlais Commutation and In re Applcdorc Commutation 31 that in
both those cases the Court was willing to assume that a writ of
prohibition would lie against the Tithe Commissioners. In Chahot
v. Lord Morpeth 22 the Court certainly proceeded upon the assumption
that a writ of prohibition might be issued to the Commissioners of
1921 2 A. C. 570 at p. 582.
2nd. Edn.( 1908). p.252.
* # 1 Ld. Ilaym 580.
al 8. Q. B. 32 and 8 Q. B. 139.
*» 15. Q. B. 446,
THE LAW OP PATENTS IN INdIa
800
[Ck. xviii
Woods aud Forests. The same was tbo case in Hex. v. Clerkenwell
Commissioners of Taxes 23 io reference to those Commissioners. In the
cases of In re Hall and of Hex v. Light Railway Commissioners 24
writs were ordered to be issued to the Comptroller-General of
Patents, and to the Light Railway Commissioners respectively. In
Board of Education v. Rice* 3 a writ of certiorari was directed to the
Board of Education. In Reg. v. London County Council 28 this Court
doubted, but did not decide, whether prohibition would lie against
the County Council. Elay L. J. expressed his doubt as being
whether the County Council would be exercising any judicial func-
tion in determining whether a churchyard which is now disused
shall be considered as part of one parish or another parish.
In In re Orosvenor Hotel Co 21 the Court refused to issue a
writ of prohibition to the Board of Trade and to their ins-
pector, upon the ground that the examination and report of an
inspector under sec. 56 of the Companies Act, 1882, was not a
judicial proceeding in any proper sense of the term. These authori-
ties are, I think, conclusive to show that the Court will issue the
writ to a body exercising judicial functions, though that body can-
not be described as being in any ordinary sense a Court.”
And the matter was put beyond doubt in the judgment of
Atkin L. J. in the same case in a certain passage which has since
been repoatedly quoted and relied on in later cases, as follows : — 28
“It is to be noted that both writs deal with questions of exces-
sive jurisdiction, and doubtless in their origin dealt almost exclu-
sively with the jurisdiction of what is described in ordinary parlance
as a Court of Justice. But the operation of the writs has extended
to control the proceedings of bodies which do not claim to be, and
** 1901. 2. K. B. 879.
* 4 (1888) 21. Q.B.D. 137 and 1915. 3. K. B. 536. Actually this statement Is
not entirely accurate in respect of In re Hall. In that case the Court held on
the facts that there were no reasons for the issue of the Writ of Prohibition
asked for. The case is however authority that for sufficient reasons the Writ
would have been issued on the Comptroller of Patents.
•• 1911 A.C. 179.
»• (1893) Q. B. 454.
•» (1897) 76. L. T. 337.
1924 1. K. B. 171 at p. 205.
*8
Ch. XVIII]
ACTING IN EXCESS OF JURISDICTION
801
would not be recognised as, Courts of Justice. Wherever any body
of persons having legal authority to determine questions affecting
the rights of subjects, and having the duty to act judicially, act in
excess of their legal authority they are subject to the controlling
jurisdiction of the King's Bench Division exercised in these writs.”
The same point that the body in order to be capable of being
controlled by the issue of a Writ of Prohibition or Writ of Certiorari
must be a body which is under a duty to act judicially, was
also emphasised by Lord ITewart C. J. (citing with approval tho
judgment already referred to of Atkin L. J. in Ilex v. Kleetrieity
Commissioners) in the following passage of his judgment in the King
v. Legislati ve Committee of the Church Assembly , ex parte Haynes
Smith™
“It is to be observed that in the last sentence which 1 have
quoted from the judgment of Atkin L. J., the word is
not “or” but “and”. In order that a body may satisfy
the required test, it is not enough that it should have
legal authority to determine questions affecting the
rights of subjects ; there must be superaddod to that
characteristic the further characteristic that the body
has the duty to act judicially. The duty to act judi-
cially is an ingredient which, if the test is to be satis-
fied, must be present. As these writs in the earlier
days were issued only to bodies, which without any
harshness of construction could be called, and naturally
would be called, Courts, so also to-day these writs do
not issue except to bodies which act or are under the
duty to act in a judicial capacity.”
Prohibition or Certiorari : where the Judicial Body has acted with-
out or in excess of jurisdiction.
There must be either a lack or an excess of jurisdiction in tho
judicial body in regard to the act which is to be prohibited if a
Writ of Prohibition is to lie. Similarly there must be a lack or an
excess of jurisdiction in tho judicial body in regard to the order or
ao 1928. 1. K.B. 411 at p. 415. In that case it was held that the legislative
Committee of the Church Assembly was not a body having the duty to net judi-
cially, and therefore Writs of Prohibition or Certiorari would not issue to it.
101
802 THE LAW OF PATENTS IN INDIA [Ch. XVIlt
decision which is to be brought up on certiorari and quashed if a
Writ of .Certiorari is to lie. 31
Prohibition or Certiorari : absence of other adequate remedy.
It haB long been settled law that no Writ of Prohibition or
Certiorari will be issued in a ease where the applicant has some
other adequate legal remedy.
The mere fact however that in the proceedings in respect of
which the Writ of Prohibition or Certiorari is asked for, there is a
right of appeal to which the Applicant may resort, is not conclusive.
The true legal position was succinctly stated by Lort Williams J.
in the case of Dorman Long i0 Co. v. Jagadisli Chandra Mahindra i 32
as follows : —
“Apart from the considerations with which I havo dealt, these
extraordinary remedies will not bo used by the Court, where there
is, as described in Sec. 45 of the Specific Relief Act, another specific
and adequate legal remedy, such as a right of appeal. The existence
of such a right of appeal, however, is not conclusive, because it may
not be adequate, and in somo circumstances the remedy given by
the issue of such writs may be more speedy and more convenient
and less costly. 33
Prohibition or Certiorari : where the writ if issued will constitute
a remedy which will be effective.
The Court will not issue either of these high prerogative
writs if it is apparent that such a writ will not be effective in the
particular case.
In Dorman Long <& Co. v. Jagadisli Chandra Mohindrd ’* an
application was made for the issue of a Writ of Prohibition against
the Controller of Patents to restrain him from proceeding with
certain Proceedings then pending before him, being opposition Pro*
11 As to Prohibition see llalsbury (Hailsham Edn.) Vol. 9, Arts. 1397, 1398
1399 and cases there cited ; as to Certiorari see llalsbury (Hailsham Edn.) Vol. 9,
Arts. 1484, 1485 and 14SG. As to jurisdiction to issue a Writ of Certiorari for
fraud or error of law on the face of the proceedings Bee further llalsbury (ibid)
Arts. 1490, 1491 and 1492.
*■ (1935). 39. C. W. N. 57 1 at p. 577.
Bee also Kitty v. North, ex parte Oakey 1927 1 K. B. 491.
• 4 (1935)39.0. W.N. 537 (C.A.) at p. 576.
Ch. XVIII]
THE REMEDY MUST BE EFFECTIVE
303
ceedings against the grant of a Patent, The ground on which tho
Writ was claimed was because the Controller had refused on tho
application of the opponent to issue a sub-poena for compelling tho
attendance of a witness before him in the opposition Proceedings.
It was sought to restrain the Controller from continuing with tho
hearing of those proceedings without issuing the said sub-poena.
In that case the Writ of Prohibition applied for having been
refused in the Court of first instance, the applicant appealed. Bet-
ween the date of first hearing and the hearing of the appeal, tho
Controller gave judgment in the opposition proceedings before him,
and thereby, as it was held, ceased to have seisin of the matter.
The result was that, while the issue of the Writ of Prohibition would
have been entirely effective at the date of the original hearing, the
altered situation had become such that this would bo no longer
effective at the date of the hearing of the Appeal.
In the judgment delivered on the appeal, while it was clearly
held that a Writ of Prohibition would lie against the Controller of
Patents in India, and that the Controller ought to have issued the
sub-poena in question, being under a duty to do so, yet the Court
of Appeal took the view that to issue a Writ of Prohibition at that
stage would be ineffective ; in view of the fact that the position
had altered since the hearing in the Court below, and that tho
Controller no longer had seism of the proceedings in which the sub-
poena was demanded. It would appear that it was primarily for
this reason that the Court of Appeal refused to issue the Writ of
Prohibition in that case. Lort Williams J. observing : — ‘‘Before
however these extraordinary remedies arc used, the Court must be
sure that they will bo effective. ,,
Prohibition or Certiorari : discretion.
There appears to be authority as to a Writ of Prohibition in
the decisions of the English cases that in the United Kingdom
the Court is not entitled to refuse the issue of a Writ of Prohibition
for discretionary reasons : in a case where the defect of jurisdiction
is clear . 33
There appears to be on the other hand authority as to a Writ
of Certiorari in tho decisions of the English cases that in the United
See Ifuhlmry (llailshain Edn.) Vol, 9, Art. 1396 and cases cited,
804 THE LAW OF PATENTS IN INDIA [Cb. XVIII
Kingdom the issue of a Writ of Certiorari is a matter within the
discretion of the Court. 36
On the other hand there appear to be dicta in the more recent
English cases tending to the view that in the case of either of these
Writs the issue of the Writ is discretionary. This view is supported
by the case already referred to in which both writs were treated as
being similar in their operation.
Mandatory injunction under Sec. 45 of the Indian Specific Relief
Act.
If necessary a mandatory injunction may be obtained from a
High Court on the Controller of Patents in a proper case, provided
the circumstances of the case are such as to fall within the terms
of the conditions stated in the section.
A Writ of Prohibition or Certiorari will lie in a proper case against
the Controller of Patents.
It is clear, it is submitted, that either a Writ of Prohibition
or a Writ of Certiorari is held in the United Kingdom to lie against
the Comptroller of Patents.
In the nature of things it is seldom that such a case arises. 37
In India there is direct authority that a Writ of Prohibition
ora Writ of Certiorari or a mandatory injunction under See. 45
of the Specific Relief Act may be issued in a proper case by a High
Court on the Controller of Patents : the point having been expressly
decided in the case of In re National Carbon Co. Inc?* by Panckridgc
J. and in the case of Borman long <0 Co. v. Jagadish Chandra
Mahindra by Lort Williams J.
88 See llnlsbury (Ilailsham Edn.) Vol. 9, Art. 1432.
87 Sec Wingate's Application (1931) 48. It. P. C. 410.
In a case where the Law Ottieer had allowed an amendment of a Specifica-
tion which was complained of by the Applicant, a Writ of Prohibition was
refused : on the ground that it was a matter within the jurisdiction and discre-
tion of the Law Officer to decide whether or not or on what terms he should
allow the amendment in question.
See Van Gcldcr's Patent (1889) 6. It. P. C. 22.
See also Rex v. Muirhcad ami Comptroller General (1927) 41. R. P. C. 28.
88 (1934) 38. C. W. N. 729.
80 (1935) 40. C. W. N. 573.
CHAPTER XIX
ENFORCEMENT BY OTHERS OF RIGHTS AGAINST
THE PATENTEE— AND AGAINST A PERSON
CLAIMING TO HAVE AN INTEREST IN
A PATENT— SUIT FOR THREATS.
PART I
Application for Revocation or Compulsory Licences : recapitula-
tion.
The extent of the obligations of a Patentee in the management of
his Patent after grant have already been considered in Chapter VIII :
that is to say his obligations as to working, and as to supply, and
as to manufacture within British India. The application in practice
of remedies for the enforcement by others of their rights against a
patentee in the event of his failing to fulfil such obligations has also
been considered in Chapter XI, where the practice concerning appli-
cations for revocation or for compulsory licences was discussed.
But for the fact that such matters came up conveniently for discus-
sion when viewed from another angle in an earlier chapter, they
might equally conveniently have been included in the present chapter.
There would seem to be an idea prevalent in some quarters that when
once a man has obtained the monopoly of a patent, he may profiteer
or withhold supplies or fail to manufacture within British India as
he pleases and to an unlimited extent. It has already been observed
that this is not the case at all. That such an idea can be entertained
by any members of the public can only be due to the fact, that there
is not generally appreciated by the public either tho nature of the
obligations of tho patentee or, equally, the extent of their own rights
to have the patented article supplied on an adequate scale and on
reasonable terms and manufactured in British India. In order to
avoid repetition however it is enough now to refer here to the
previous Chapters VIII and XI, and to emphasise the point that the
remedies mentioned in Chapter XI arc in truth practical remedies,
which are available for the enforcement during the currency of a
patent, by others, of the rights of those others (i.c. the public) against
806 THE LAW OF PATENTS IN INDIA [Ch. XIX
a Patentee ; and are available for the assistance and protection of the
Industries of India.
In addition to these remedies already mentioned those others
(i. e. the public) have also a further remedy by way of a Suit for
Threats with which it is proposed now to deal in this chapter.
PART II
SUIT FOR THREATS
Previous English Law.
In England at Common Law a man has always had the right
to bring an action for damages against a person, who has made to
him a statement to the effect that there is a patent in existence and
that he (the person to whom the statement is made) has infringed it
or is infringing it, when such statement is untrue (either as to the
existence of the Patent or as to the fact of infringement or both),
and has been made maliciously, and has caused him or is such as
will cause him (the person to whom the statement is made) damage.
In such an action the Plaintiff might also succeed in obtaining an
injunction. To such an action it has always been held to have been
a good defence that the statement had been made bona fide and
without motive, the person making it having an honest belief in the
infringement and, it follows, in the existence of the Patent. This
was the view taken by the Court in Warm v. Wei Id (1869) L. R. 4
Q. B. 730 at p. 737 and confirmed both by Jcssel M. R. and by the
Court of Appeal in the case of Halsey v. Brotherhood (1880) 15.
Ch. D. 514 and (1881) 19. Ch. D. 386.
Originally it docs not appear to have been considered to be a
material issue whether or not the porson making the statements
complained of had or had not followed them up by taking judicial
proceedings for infringement. 1
1 See and compare Hollins v. Ilinktt (1872) L. R. 13 Eq. 355 and Axmann v.
Lund (1874) L. R. 18 Eq. 330 with Halsey v. Brotherhood (supra). In Itollins v.
1 links and in A em-.mn v. Lund it was hold in effect that even if the statement
being a statement of intention or threat to institute legal proceedings, was made
bona fide, yet if the threat was not followed up by such proceedings being duly
taken, then the porson making the statement had no right to do so and the person
to whom the statement was made had a right to an injunction restraining any
repetition of such statements. But this doctrine docs not appear to have been
approved of in the case of Halsey v. Brotherhood. See Edmunds (1890 edu.) at
p. 348.
Ch. X1XJ
SUIT FOll THREATS
807
Furthermore in addition to all such considerations of the
Common Law and apart from the later Act of 1883, it has been
pointed out that a patentee was under a certain duty which was
imposed upon him by Section 4 of the Statute of Monopolies ; and
it has been suggested that for the breach of such duty a person to
whom threats were made had a right under such Section to sue the
patentee in certain circumstances. The material part of that Section
reads as follows : —
“IV. And be it further enacted by the Authority aforesaid,
That if any Porson or Persons at any Time after the End of Forty
Days next after the End of this present Session of Parliament, shall
be hindered, grieved, disturbed or disquieted, or his or their Goods
or Chattels any way seized, attached, distrained, taken, carried away
or detained, by occasion or pretext of any Monopoly, or of any such
Commission, Grant, Licence, Power, Liberty, Faculty, Letters
Patents, Proclamation, Inhibition, Restraint, Warrant of Assistance
or other Matter or Tiling tending as aforesaid, and will sue to bo
relieved in or for any of the Premises ; that then and in every such
case, the same Person and Persons shall and may have his and their
Remedy for the same at the Common Law, by any Action and
Actions to bo heard and determined in the Courts of King’s Bench
Common Pleas and Exchequer, or in any of them, against him or
them by whom he or they shall be so hindered, grieved, disturbed or
disquieted, or against him or them by whom his or their <Goods or
Chattels shall be so seized, attached, distrained, taken, carried away
or detained ; wheroin all and every such Person and Persons which
shall be so hindered, grieved, disturbed or disquieted, or whoso
Goods or Chattels shall be so seized, attached, distrained, taken,
carried away or detained, shall recover Three Times so much as the
Damages which he or they sustained by moans or occasion of being
so hindered, grieved, disturbed or disquieted, or by means of having
his or their Goods or Chattels seized, attached, distrained, taken,
carried away or detained, and double costs.” There is no record
of any action having been brought under the section until the case of
Peek v. Hindes 2 in which the Plaintiff attempted to sue in respect
of a former unsuccessful infringement suit which he alleged fell
brought within the meaning of the section.
(1898) 15 R. P. C. 113. And See Fletcher Moulton (1913 Edn.) p. 221.
THE LAW OF PATENTS IN INDIA
fCh. XIX
It would appear, as is remarked in Fletcher Moulton , 3 a matter
of some doubt whether mere threats would give a cause of action
under the section and also whether the section applies to actions
for the enforcement of Patent rights.
The English Act of 1883 was the first Statute to contain specific
provisions in regard to threats. Under Section 32 of that Act it
was provided as follows : —
“32. Where any person claiming to be the patentee of an
invention, by circulars, advertisements, or otherwise, threatens any
other person with any legal proceedings or liability in respect of any
alleged manufacture, use, sale, or purchase of the invention, any
person or persons aggrieved thereby may bring an actiou against
him, and may obtain an injunction against the continuance of such
threats, and may recover such damage, if any, as may have been
sustained thereby, if the alleged manufacture, use, sale, or purchase
to which the threats related was not in fact an infringement of any
legal rights of the person making such threats : Provided that this
section shall not apply if the person making such threats with due
diligence commences and prosecutes an action for infringement of
his patent.”
From the wording of that section it is seen that under the Act
of 1883 all that it was necessary for a Plaintiff to establish in order
to succeed in a suit under Section 32 was, firstly, that threats within
the section had been made, secondly, that the acts of the Plaintiff
complained of were not in fact an infringement and, thirdly, that the
Defendant had failed with due diligence to commence and prosecute
au action for infringement. It is clear that under the Act of 1883
the fact of the Defendant having made the threats under a bona fide
belief that they were justified and a belief that the acts of the Plain-
tiff complained of were in fact an infringement was immaterial. Thus,
as is poiuted out by Edmunds* the doctrine originally enunciated by
Malms V. C. in Hollins v. Hinks and in Axninnu v. Lund, which
had been dissented from in Halsey v. Brotherhood , received legis-
lative sanction and was unambiguously enacted as the law. It is also
clear that under the Act of 1883 it was positively and expressly
provided in effect that the Plaintiff might obtain an injunction even
— i( , ig edn ) at p 22h
* Edmunds (1890 : edn.) p. 350.
C‘h. XIX]
PREVIOUS ENGLISH LAW
without proof of having suffered any damage. The Act thus created
a new duty on the part of a patentee, boyond any duty under which
he would have been under the Common Law, and a new tort in the
case of a breach of such duty.
It has also been held that the right of action created by the
section is restricted to an action against a patentee and that there
was under the Act no right of action against a licensee. 3
In 1907 the provisions of what had been Section 32 of the 1883
Act were embodied in Section 36 of the Act of 1907 which read as
follows : —
“36. Where any person claiming to be the patentee of an
invention, by circulars, advertisements, or otherwise, threatens any
other person with any legal proceedings or liability in respect of any
alleged infringement of the patent, any person aggrieved thereby may
bring an action against him, and may obtain an injunction against the
continuance of such threats, and may recover such damage (if any) as
he has sustained thereby, if the alleged infringement to which the
threats related was not in fact an infringement of any legal rights of
the person making such threats :
Provided that this section shall not apply if the person making
such threats with due diligence commences and prosecutes an action
for infringement of his patent.”
It is seen that the slight alterations arc merely alterations of
drafting and for purposes of clarity ; the phrase “infringement of the
patent” being substituted for the words “manufacture, use, sale or
purchase of the invention” : and while the old section referred to
“such damage, if any, as may have been sustained thereby” the newer
section by using the words “such damage, if any, as he has sustained
thereby” made it clear that the Plaintiff could only recover damage
actually suffered by himself. Kor all practical purposes the provi-
sions in force in the United Kingdom under both acts may be treated
as the same.
There have been numerous actions under these acts. 3
* See Tender v. Stevenson (1898) 15. R. 1*. C. 2*1.
• See Edmunds (1890 edn.) p. 3*19 and Fletcher Moulton (1913 ; cdn.) p, 298
where the cases are referred to*
102
$10 THE LAW OF PATENTS IN INDIA [Ch. XIX
Present English Law.
The provisions regarding threats are now contained in Section
36 (l) and (2), of the English Patents and Designs Acts 1907-1932,
the whole of this section having been enacted in the year 1932 in
substitution for the provisions above mentioned : —
“36 (1) Where any person, by circulars, advertisements or
otherwise, threatens any person with an action for infringement of
patent or other like proceedings, then, whether the person making
the threats is or is not entitled to or interested in a patent or an
application for a patent, any person aggrieved thereby may bring
an action against him, and may obtain a declaration to the effect
that such threats arc unjustifiable and an injunction against the
continuance of such threats and may recover such damage, if any,
as he has sustained thereby, unless the person making the threats
proves that the acts in respect of which the proceedings are threa-
tened constitute or, if done, would constitute an infringement of a
patent in respect of a claim in the specification, which is not shown
by the Plaintiff to be invalid, or an infringement of rights arising
from the acceptance of a complete specification in respect of a
claim therein, which is not shown by the Plaintiff to be capable of
being successfully opposed.
(2) The Defendant in any such action as aforesaid may apply,
by way of a counter-claim in the action, for any relief to which he
would be entitled in a separate action in respect of any infringe-
ment by the Plaintiff of the patent to which tho threats relate”.
As this recent English Section has not been adopted in British
India, it is unnecessary in this work to consider it in detail or the
points in which it differs from the provisions of the English Act of
1907. It follows that English decisions since the year 1932 and
based on the current English section will not always be in point in
regard to the construction of the provisions current in British
India at the present day.
Previous Indian Law.
The earliest Act in British India to contain any provisions in
regard to threats, such as are now being considered, was the Act of
1911. The provisions of tho English Act of 1883 in regard to
threats were among those matters which had not been adopted in
Ch. XIX]
PREVIOUS INDIAN LAW
811
the Indian Act of 1888. A reason is to be found on a perusal of the
Objects and Seasons of the Act of 1011 (i.c. of Bill No. 9 of 1910)
in which (in clause 3) it was observed that ‘although the Indian
Act of 1888 was passed five years after the United Kingdom Statuto
of 1883, it was felt that the time was not yet ripe in this country
for introducing the English practice in its entirety, as the volume
of Patent work was then small. 9 * The samo passage then conti-
nues ; — “Now, however, that it is growing and is likely to do so at
a much greater rate in future, it is thought advisable to bring the
practice in this country more into conformity with that of the
United Kingdom* 9 And in clause 7 of the same Objects and
Reasons these provisions are specifically referred to as follows
“The following improvements in the law proposed by the Bill
may here be enumerated*'. (Various matters under alphabetical
sub-headings are then motioned) “(G) Threats of legal proceedings
will be actionable unless the patentee proceeds diligently with an
infringement suit. 99
The actual provisions in the Act of 1911, under Section 36
thereof were as follows : —
“30. Where any person claiming to be the patentee of an invent
tion, by circulars, advertisements or otherwise, threatens any person
with any legal proceedings or liability in respect of any alleged
infringement of the patent, any person aggrieved thereby may bring
a suit against him in a District Court having jurisdiction to try the
suit, and may obtain an injunction against the continuance of such
threats, and may recover such damage (if any) as he has sustained
thereby, if the alleged infringement to which the threats related
was not in fact an infringement of any legal rights of the person
making such threats :
Provided that this section shall not apply if the person making
such threats with due diligence commences and prosecutes a suit for
infringement of his patent."
These with ordy minor alterations made by tho Act of 1930
are the provisions now in force.
Present Indian Law.
In strict law it will be correct to say, (as was pointed out in
Fletcher Moulton on Patents (1913 : edn.) at p. 219 in regard to the
legal position in England), that in British India at the present day
812
THE LAW OF PATENTS IN INDIA
[Ch XIX
4< a person who is aggrieved by statements to the effect that he is
infringing a patent may have one or more of three remedies/ 1
Firstly his rights at Common Law, to which reference has already
been made : secondly his rights under Section 4 of the Statute of
Monopolies : thirdly his rights under Section 36 of the Act of 1911.
In practice it will be seldom, if ever, that such a person will need
to resort to his rights at Common Law or his rights under the
Statute of Monopolies. It is proposed accordingly in this Chapter
to deal only with the matter in relation to Section 36 of the Indian
Patents and Designs Act of 1911 already mentioned.
The wording of this section which contains the provisions now
in force is as follows : though it differs but slightly from the section
of the 1911 Act as originally passed, it may be set out here for
convenience of reference in full, the passages underlined being
those where alteration from the Act of 1911 was made by the Act
of 1930.
“36. Where any person claiming to have an interest in a patent
by circulars, advertisements or otherwise, threatens any other person
with any legal proceedings or liability in respect of any alleged
infringement of the patent, any person aggrieved thereby may bring
a suit against him in a District Court having jurisdiction to try the
suit, and may obtain an injunction against the continuance of such
threats, and may recover such damage (if any) as he has sustained
thereby, if the alleged infringement to which the threats related
was not in a fact an infringement of the patent.
Provided that this section shall not apply if an action for
infringement of the patent is commenced and prosecuted with due
diligence”.
General effect of the section.
The section is peculiarly framed and is somewhat peculiar in its
effect. Commenting on the similar peculiarity of the effect of Section
32 of the English Act of 1883 Cozens Hardy M. R. in one case
said : —
“Section 32 does not, as Mr. Gray in his ingenious argument has
suggested, merely relieve a plaintiff from the obligation of establish-
ing malice in the old common law action, but it confers an entirely
new right of action, and one in which malice is not an issue between
Ch. XIX]
PRESENT INDIAN LAW
813
the parties. As this Court in more than one case has pointed out', the
Section is peculiarly framed. Tt purports to give, and does in the
first part give, a right of action to the person who is threatened, hut
this is followed by a proviso which says that this section shall not
apply, if the person making the threats with due diligence commen-
ces and prosecutes an action for infringement of his Patont ; that
is to say, although the Plaintiff, the person who is threatened, may
think he has a good cause of action and may issue his writ, claiming
an injunction and damages in respect of the threats he cannot tell
till a later period whether in fact the right of action given by
Section 32 is or is not in existence, because the whole Section is not
to apply if the person making such threats, that is the patentee, with
due diligence commences and prosecutes an action for infringement
of his Patent.” 7
It is important to note that as far as a Patentee is concerned, the
section in no way stands in his way to prevent him giving any
warnings or notices either to the general public or to individuals, if
he is ready to follow up those warnings or notices by promptly insti-
tuting a suit. The section was only intended to prevent a Patentee
from making statements throwing doubt on the right of other i>crsons
to carry on business in a particular manner or in connection with
certain particular articles, ns they were doing, and thereby causing
such persons loss in such business, and yet refusing to have the vital
question, whether or not such persons were entitled to carry on
their business in the way they were doing, properly decided.
It would seem that the section is intended to relieve members of
the public and persons, who competo in business with the patentee,
from the disadvantages of a situation in which it might be to their
interest but not to the interest of a patentee to have the issue of
infringement promptly and definitely decided. In such a situation
without the aid of Section 36 of the Indian Act of 1911, they might
be unable satisfactorily to get the point decided, whether what they
were doing was in fact an infringement or not. It is possible they
might bo entitled to sue at Common Law for a declaration in some
form or other to the effect that they were entitled to carry on busi-
ness as they were doing ; and they might in such suit at Common
Law obtain an injunction in certain cases and, possibly, damages in
See Craig v. Dowdiny (1908) 25 R. P. C. 259 at p. 262.
814 . THE LAW OF PATENTS IN INDIA [Ch. XIX
certain cases on the principles and in the circumstances already
mentioned. 8 But it is clearly more satisfactory for' such persons to
have their rights clearly defined under the Act. At the same time'
it is also to the advantage of patentees that they should have tho
benefit of the proviso which is included in the section.
Since the questions both of infringement and of the validity of
the Patentee’s patent may bo decided equally either in a suit by the
Patentee for infringement or in a suit by the person threatened
against the Patentee for threats, it is possible that in some instances
it may be to the advantage of the Patentee to allow tho matter to bo
decided in the threats suit without commencing any suit for in-
fringement. More often than not however, the matter is fought out
in an infringement suit.
The Tribunal.
The suit in question under Section 3C> is, under the wording of
the Section, to be brought in a “District Court having jurisdiction
to try the suit.” The expression District Court as here used
includes the original side of a High Court : for the reasons men-
tioned elsewhere in connection with Infringement Suits. 9
Regarding the question of jurisdiction cither for a High Court
or for a District Court reference may be made to the observations
already made in regard to jurisdiction in infringement suits in
chapter XVII.
The Relief.
The reliefs obtainable to which reference is made in Section 36,
(injunction and damnges) arc precisely those obtainable in any suit
in which the cause of action is a tort, where there is a prospect of
the tort being repeated.
The Grounds.
The grounds which it is necessary for tho Plaintiff to establish,
in order to succeed, may be considered under the following heads : —
(i) What arc threats.
(ii) Falsity of the statement.
(iii) Lack of diligence on the part of tho Defendant in
commencing and prosecuting a suit for infringement.
* Bee page 806 above.
1 Bee page 668 above.
Ch. XIX] WHAT AllE THREATS 8lS
What are threats : in what form they may be made.
It is immaterial in what form the statement is made, it nmy
nevertheless amount to a threat within the meaning of the section.
It has been held that the words “or otherwise” arc not to be
construed merely as ejusdem generis} 0
Letters even in answer to enquiries may amount to threats . 11
Statements even in letters written by the Solicitors of the
Defendant may amount to threats . 12
The fact that such letters have been written “without
prejudice” has been held to be immaterial . 13
Oral statements may be threats . 11
What are threats : to whom the threats must be addressed.
It has been held in England that it is immaterial to whom the
threats have been addressed. The threat may be addressed to the
Plaintiff, or his customers, or his manufacturers, or to the world in
general . 15
If the threat is addressed solely to the Plaintiff, it is immaterial
that it has not been published to anyone else ; since there is no
question of libel or publication, the only question in this respect
being whether or not the words arc a threat within the meaning of
the section. Also if the statement is addressed to a third party and
not to the Plaintiff, it may none the less be a threat which may give a
right of action under the section to the Plaintiff . 10
10 See Skinner <0 Co. v. Perry 10 R. P. 0. 1. (0. A.).
11 See Skinner <('• Co. v. Perry 10. It. P. C. 1. (C. A.).
,a See Engels v. Hubert 19. K. P. O. 201 ; Combined Weighing Machine Co*
v. Automatic Weighing Machine Co. G, It. P. C. 502 ; Crumpton v. Patents
Investment Co. 5. R. P. C. 393. Hut see Day v. Forster 7. R. P. C. 54.
l# See KurU v. Spence 5. R. P. C. 1G1 at p. 173.
1 4 See Farr v. Weather heat l cO Harding 49. R. P. C. 2G2 ; Luna Advertising
Co. Ltd. v. Burnham d? Co. 45. R. P. C. 258 ; Ellis i0 Sons Ltd. v. Pogson 40.
R. P. C. 62 ; Kurtz v. Spence 5. R. P. C. 161.
14 See Fletcher Moulton at p. 222 ; as to customers sec Craig v. Doivding
25. R. P. C. 1 ; Iloffnung tO Co. v. Salisbury 16. R. P. C. 375 ; Burt v. Morgan 4.
R. P. C. 278 ; a9 to manufacturers see Webb v. ter instein 15. R. P. 0. 78 ;
Willoughby v. Taylor 11. R. P. 0. 45.
10 See Skinner v. Perry 10. R. P. C. 1. (C. A.) and see Driffield Co. v.
Waterloo Co. 3. R. P. C. 46.
&16 THE LAW OF PATENTS IN INDIA [Ch. XIX
What are threats : who must be threatened.
It is immaterial against whom the Defendant may have
threatened that he will take the proceedings so threatened. It is
provided expressly by the Section that any person aggrieved by the
threats has the right of bringing the suit. 17
What are threats : what must be threatened.
Where a suit for infringement has been brought against an
infringer a statement or notice to the public that it has been brought,
is not a threat within the meaning of the section. 18
Nor is a general statement or a general warning to the public
that a patentee intends to protect his rights a threat. 19
But in special circumstances where the statement though
couched in general words may have been expected to be understood
as a threat by particular persons, the Court has found that the form
of the words is unimportant and that the words amounted to a
threat ; the dividing line between a general warning and a threat is
difficult, in view of these decisions to define. 20
The Indian section expressly refers to a threatening with “legal
proceedings or liability in respect of any alleged infringement of the
patent”. What is threatened must be something of the nature
indicated. In this connection however it should be noted that it is
not necessary that cither legal proceedings or liability should be
actually mentioned expressly in words if the effect of the statement
is clear by implication. The following observations made by
Clauson J. in one case are in point. In that case (which was brought
under Section 36 of the English Acts 1907 to 1919 of which the
wording is in this respect the same as in the Act now current), there
17 Cf Terrell (8th edn : 1934) p. 360.
lH See Sevan v. Welsbach Incandescent Gas Light Co. 20. R. P. C. 73 ; and
Incandescent Gas Light Co. Ltd. v. Sunlight Incandescent Co. Ltd. 14. R. 1\ C. 180.
10 See Weldrcx Ltd. v. Quasi- Arc Co. Ltd. 39. R. P. C. 323. Cr out her v.
United Flexible Metallic Tube Co. 22. R. P, C. 549; Willoughby v. Taylor 11.
R. P. C. 45 ; Dick v. Baslam 8. R. P. C. 196 ; Brauer v. Sharpe 3. R. P. C. 193.
ao See Gars v. Bland Light Syndicate Ltd. 28. R. P. 0. 33 ; Craig v.
Doicding 25. R. P. C. 1 and 25. R. P. C. 259 (C. A) ; Douglas v. Pintsch's Patent
Lighting Co. 13. R. P. C. 673 ; Johnson v. Edge 9. R. P« C. 142 (C. A.).
Ch. XIX]
WHAT MUST BE THREATENED
81 7
had been an interview between an Agent of the Defendant Firm and
an Agent of a Company which was a purchaser from the Plaintiff*
Company. The Plaintiff Coy. was a manufacturing Company being a
manufacturer of electric signs. Speaking of that interview the
learned judge observed : —
u The Plaintiffs arc concerned with certain objects known as
daylight signs. The Defendants appear also to be concerned with the
same objects. The Plaintiffs supplied a daylight sign to a shop
which was an agency of Messrs W.& A. Gilbey Limited, the daylight
sign having the name of Messrs Gilbey on it. Thereupon Mr. Beams,
who is admitted to be a representative of the Defendants, visited Mr.
Burke, the Secretary to Messrs Gilbey. This is what took place. On
the 15th of December, 1927, Mr. Beams called at Messrs Gilbcy’s
Office in Oxford Street and saw Mr. Burke. Mr. Beams said that ho
was representing the Defendants and that he had been instructed by
them to call with reference to a sign which was exhibited outside the
premises of their agents Messrs Hawes Stores. Mr. Beams then
stated that this sign was an infringement of his firm’s Patent and he
requested Messrs Gilbey to take steps to have the sign immediately
removed from Messrs Hawes’ premises. Mr. Burke’s affidavit
continues : ‘T asked the said Mr. Beams by what authority he made
such statement and demand, and he then stated that his firm had
during the year 1927 acquired the sole right of lettering on the front
of signs under Letters Patent” the number of which he gave. The
Plaintiffs are seeking here for an injunction to restrain the
Defendants from threatening any person with legal proceedings or
liability in respect of any alleged infringement of any Letters Patent
in which the Defendants claim to have an iuterest. The question
and the sole question 1 have to determine in considering whether I
should grant until the trial the injunction that is asked is this : Do
those facts which I have recited from Mr. Burke’s affidavit satisfy
me that as a matter of fact Mr. Beams threatened Messrs Gilbey
with legal proceedings or liability ; in other words, if I, or had this
matter come before a Jury, the Jury, had been present at that
interview, what could we have supposed that Mr. Beams intended
to convey to Mr. Burke having regard to Mr. Beams’ statement that
he had been instructed to call with reference to the matter, having
regard to his statement that the sign was an infringement of his
103
618 THE LAW OP’ PATENTS IN INDIA [Ch. Xlrf
firm’s Patent, having regard to his request to the Company to take
steps to have the sign immediately removed, and having regard to
the fact that, when he was asked by what authority he was making
this statement and demand, he referred to an interest in Letters
Patent ? I should myself have inferred, had I been present, that Mr.
Beams was courteously pointing out to Mr. Burke, that Mr. Burke’s
company were under legal liability to the Defendants in respect of
the Defendants’ position as interested in a Patent, and I should have
thought that, courteous and quiet though no doubt the interview
was, the whole purport of it was to threaten Mr. Burke’s Company
with that which would result from legal liability, and I understand
that to be threatening Messrs Gilbey with legal liability. I should
myself be prepared even to go further, though I do not think it is
necessary. I think that an interview of this kind, a serious interview
between business men, although nobody speaks of solicitors and
writs, has no real meaning except to convey to the person whom
I regard as having been threatened that the threat oner has legal
rights and means to enforce them, and although, as I say, he does not
refer in so many words to writs, means, “unless you bend to my
will, I shall enforce my rights” in the way in which they arc
naturally enforced, i.e. by legal proceedings. It seems to me to be a
question which depends entirely upon the inference which an ordinary
man would draw from the attitude of the parties if he was present at
the interview. Speaking for myself on these materials I am
satisfied that the Defendants did threaten Messrs Gilbey with legal
proceedings or liability.” 21
On the wording of the section it is difficult to understand what
is meant by “threatening” a man “with liability” though these words
occur both in the English Acts of 1883 and 1907 and in the present
Indian Act of 1911. The passage about liability has now been
omitted from the current English Statute. It may be that the framers
of the section had in mind a situation of the same nature as that in
the case in regard to which Clauson J. made the observations above
mentioned ; and that the intention was merely to cover a case where
no reference to legal proceedings was mentioned but where by
speaking of liability it might be implied that the Defendant meant
to take action in regard to such liability.
Luna Advertinny Co. Ltd. v. Burnham & Co. (1928) 45. R. P. C. 258.
Ch. XIX] AN EXISTING PATENT POSTULATED 819
Falsity of the statement.
It is necessary in order that the Plaintiff will succeed that ho
will establish that as stated in Section 36 “the alleged infringement
to which the threats related was not in fact an infringement of tho
patent”.
The falsity indicated in the words last quoted of Sec. 36, in
regard to the statement of the Defendant, may be established by the
Plaintiff in one of two ways. Either he may establish, broadly speak-
ing, that, though the Defendant has a Patent and though that Patent
is a valid Patent yet there has been in fact no infringement of it : or
he may establish that, though the Defendant has a Patent such
Patent is invalid.
Indeed the grounds necessary for the Plaintiff in a threats
suit, to succeed, are the same as the grounds necessary for tho
success of a Defendant in a suit for infringement subject to ono
important exception.
But the section postulates the existence of a Patent.
While at first sight it might have seemed possible under the
Section for a Plaintiff also to succeed by showing that the threats
had been false in that there had been no infringement by him
because the patent, of which tho Plaintiff claimed to bo Patentee or to
have an interest, was in fact non-existent, it has been held in England
that a Plaintiff cannot succeed in a threats suit under the section
unless there is in fact a Patent in existence. This very point was
fully argued and decided in a case in which the alleged throats had
been made by a Defendant at a time when he was merely an applicant
for a Patent and in whose case a grant had subsequently beon
refused. The case was brought under Section 36 of the English
Act of 1907 as amended by the Act of 1919. It was held that the
section pre-supposed the existence of a Patent. A material part of
the observations of P. O. Lawrence J. on this point was as
follows : —
"This is an action brought to restrain threats made by the
Defendant in respect of an alleged infringement of an invention
which, at the time when the threats were made, had been protected
by a Complete Specification which had been accepted. The question
to be determined is whether the remedy conferred by Section 36
820
THE LAW OF PATENTS IN INDIA
[Ch. XIX
of the Patents and Designs Act 1907, as amended by the Act of
1919, is available to the Plaintiff.” (The learned Judge then stated
the facts) “In these circumstances, the question is •whether
the Plaintiffs are entitled to bring an action against Mr. Pogson
under Section 36 as amended. As had been frequently pointed out,
such an action is not an action to enforce any common law right.
It is a statutory right of action conferred upon a person aggrieved
where groundless threats of legal proceedings have been made. In
order to succeed in such an action, it is essential that the Plaintiff
should bring his case within the four corners of the Section. In
my judgment, the Section presupposes the existence of a patent
and docs not apply to a case where there is no patent. The words
are : “Where any person claiming to have an interest in a patent
threatens”, and so on, “any person with legal proceedings in respect
of any alleged infringement of the patent”, the person aggrieved,
reading it shortly, may bring an action and obtain an injunction
against the continuance of threats and may recover such damage as
he has sustained if the alleged infringement to which tho threats
related was not, in fact, an infringement of the patent ; and the
proviso is that the section “shall not apply if an action for infringe-
ment of the patent is commenced and prosecuted with due diligence.”
Having regard to the language of that Section, I am of opinion that
the Section contemplates the existence of a patent in which a person
has or claims to have an interest ; that is to say, the person need not
necessarily be the patentee ; it is sufficient for the purposes of the
Section if he has, or claims to have, an interest in it. Mr. White-
head contends that the Section applies even if there is no patent
in existence, and that if a person claiming to have an interest in
a patent, although there is no patent in existence, threatens another
with legal proceedings or liability in respect of the infringement
of a non-existent patent, any aggrieved person can under the Section
bring an action in respect of such threats. In my judgment, that
is not the right view In my opinion, there being no patent,
he could not, in fact, threaten legal proceedings or liability in
respect of an alleged infringement of the patent, nor could the
person aggrieved recover damages by proving that the alleged
infringement to which the threats related was not, in fact, an in-
fringement of the Patent, in both cases because there is no patent
in existence. Moreover, the proviso clearly could not apply to a
. Gb. XIX]
the proviso
821
case where there was no patent in existence, as no action for an
infringement of the patent could possibly bo commenced or prose-
cuted with due diligence. For these reasons, I hold that the action
fails, and must be dismissed with costs.” 22
This decision was confirmed on appeal, when Warrington L. J.
in clear and emphatic language made the following observations
“At common law it was an essential of a cause of action against
a man uttering threats in respect of property that those threats
should arise in malice. Malice was an essential to the cause of
action. The Section creates a new cause of action altogether, of
which malice is not an ingredient. But then it qualifies that cause
of action in two ways. It, first of all, provides a special defence
to the action, because it enables the defendant to prove, if he can,
that the alleged infringement about which lie was threatening was
in fact an infringement ; because the damages can only be recovered
if it was not an infringement ; but, besides that, it excludes the
application of the Section altogether if an action for infringement
of the patent is commenced and prosecuted with due diligence.
Neither of those qualifications can apply if there is no patent at all.
It seems to me that it is quite impossible to read the Section except
in this way : that it presupposes the existence of a patent ; the
patent creates a monopoly, and one of the conditions under which
the patentee, or the person interested in the patent, enjoys the
monopoly, is that he should be subject to these actions for threats ;
but again his liability to be so subject is qualified in the two ways
which I have mentioned ; and the Section, if not read in the way
the learned Judge has read it, would be very much wider than it
is possible to suppose the Legislature intended.”
Lack of diligence on the part of the Defendant in commencing and
prosecuting a suit for infringement.
It will have been noted that the current Indian section contains
the following proviso which as now worded was enacted by the Act
of 1930 : —
“Provided that this section shall not apply if an action for
the infringement of the patent is commenced and pro-
secuted witli due diligence.”
See Ellis <0 Sons Lid. v. Pay son (1923) 40. K. I*. C. 62 ; ami on appeal
at p. 179.
THE LAW OF PATENTS IN INDIA
[Ch. XIX
Thus for a Plaintiff to succeed in a suit under the section it
is necessary for him in addition to the grounds already discussed
to establish that the Defendant has not cammenced and prosecuted
a suit for infringement with due diligence. The questions therefore
arise what is “due diligence”, what is “commencing and prosecuting”,
and what sort of suit, that is to say by whom, against whom, and
for what kind of infringement, will do, within the meaning of the
section, to prevent the section becoming operative.
Due diligence.
It has been held in England that time is to be reckoned, in
considering the question of due diligence, from the date of the
threats and not from the date when the patentee knew of the
infringement. 23
It has also been held in England that the Patentee cannot
be expected to start an action till he finds someone who persists in
infringing. 2 *
Further, as pointed out in Fletcher Moulton on Patents (1913
edn. p. 223) a patentee will not, it is submitted, become liable for
threats within the section in a case, where, before there is any actual
infringement, he issues a general warning that he intends to protect
his patent rights in the event of any infringements being perpetrated
in the future, even though he may not follow up the threats with
any suit. For in such a case it would be impossible in the absence
of any infringements or specific threats of infringement for him to
bring any suit ; and therefore he is unable to avail himself of the
protection of the proviso ; and it will be of no avail for a Plaintiff
to rely on a ground that the Defendant did not commence a suit for
infringement with duo diligence. But such a case seems not strictly
affected by the meaning of the proviso. Bather it is a case where
there must be held to havo been in fact no threats within the mean-
ing of the section.
It has also been held in England that in considering the ques-
tion of due diligence the patentee is generally entitled to proper
time to decide as to his course of action even after threats have been
made. 25
" See Colley y. Hart 7. R. P. C. 101 at p. 103; Challender y. Hoyle
4. R.P. 0.363(C. A.).
*' See Colley y. Ilart 7. R. P. 0. 101.
” See Challender v. Hoyle 4. R. P. C. 363 (C. A.).
ck XlX] DUE DILIGENCE 823
Amendment of the Specification by the person making the threats
after the threats and before bringing his suit for infringement : —
In England it has been suggested that there has not been a
want of due diligence when the Defendant in the threats suit has
waited while he has effected an amendment in his Specification
before bringing an infringement Buit . 26
The question whether there has been due diligence is a ques-
tion of fact . 27
“Commenced and prosecuted.”
It has been held in England that where a suit has been com-
menced before the making of the threats but diligently prosecuted
thereafter, this fulfils the proviso . 28
It has been decided in England that it is not necessary that
the infringement suit referred to in the section should be fought out
to a finish or even is it necessary that it should come up for hearing.
Thus though the Defendant in the threats suit has commenced but
abandoned his infringement suit, he will nevertheless have tho
benefit of the proviso and escape liability for the alleged threats.
Such a decision is certainly in keeping with what may be assumed to
have been the intention of the section, which cannot be more than to
prevent the evils of an indecisive position. As was said by Bowen
L. J. : “the sword of Damocles either should not bo suspended or
should fall at once.”
What infringement suit will give immunity under the proviso ?
It has been held in England that it is not necessary, in order
that the Defendant in the threats suit will have the benefit of the
proviso of the section, that he should have brought an infringement
*• See Stepney Spare Motor Wheel Ltd. v. Hall 28. R. P. C. 381 ; Davies
and Davies Patent 28. R. P. C. 50. ; Hall v. Stepney Spare Motor Wheel Ltd.
27. R. P. C. 233 at p. 235 and comprising Fusee Vesta Co. v. Bryant <& May
4. R. P. C. 191.
■ 7 For references to illustrative cases where it has been held there was due
diligence and to cases where it has been held there was not, see Fletcher Moulton
(1910 edn.) p.225.
** See Haskell Oolf Ball Co. v. Hutchinson 21. R. P. 0. 497 ; Berliner v.
Edison Bell Phonograph Co. Ltd. 16. R. P. C. 336 at p. 338 ; Dunlop Pneumatic
Tyre Co. Ltd. v. New Seddon Co. Ltd. 14. R. P. C. 332 (C. A.) ; Incandescent Oas
Light Co. Ltd. ▼. Sunlight Incandescent Co. Ltd. 14. R. P. C. at p. 188.
824 THE LAW OF PATENTS IN INDIA [Ch. XIX
suit against the Plaintiff in the threats suit. It is sufficient in
effect if the issue of infringement concerning the class of articles
mentioned in the threats, and in which the Plaintiff in the threats
suit is interested, is in issue in the infringement suit.' 9
Since the wording of the proviso in Section 36 of the Indian'
Act of 1911 now current (unlike the wording of the proviso in Sec-
tion 36 of the English Act of 1907) makes no mention of the person
by whom the infringement suit is to bo brought, it would seem that
in India it will be immaterial even whether the Defendant in the
threats suit is Plaintiff in the infringement suit. And it would
appear that the Defendant in the threats suit may still obtain the
immunity of the proviso, provided the same question of infringe-
ment is in issue in the two suits, even where this matter of infringe-
ment has been brought in issue in an infringement suit, where all the
parties are different to those in tho threats suit.
As to procedure.
It is next proposed to consider a few points of procedure
relating especially to the procedure in a suit for threats. As to
other matters of procedure reference may be made to tho observa-
tions previously made as to procedure in Infringement Suits.
Who may be sued.
It is not merely the Patentee who may be sued or a person who
claims to be a Patentee, but anyone who claims an iuterest in the
Patent.
Since in Section 36 of tho Indian Act the material words used
since the amendment of 1930 arc “any person claiming to have an
interest in a patent”, it is clear that in British India (as in Eng-
land under the Act of 1907 after it had been amended by the Act of
1919), if threats have been made by a licensee or a person who claims
to be a licensee a suit for threats will lie under the section against
such person. 30
aw See Electric Lamp Manufacturing Go. Ltd . v. Osram Lamp Works I Ad.
28. R. P. C. 480 ; Combined Weighing Machine Go. V. Automatic Weighing
Machine Co. 6 R. P. C. 502 ; Challender v. Roylc 4. R. P. C. 363 (C.A.).
80 See Ellis < 0 Sons Ltd. v, Pogsoti (1923) 40 R. P. C. 62. Contrast as to the
position under the English Act of 1907 prior to the amendment of 1919, Diamond
Goal Gutter Co. v. Mining Appliances Go. (1915) 32 R. P. C. 569 ; and Fletcher
Moulton (1913 ; cdn.) at p. 221 ; and see Clause 22 of the Objects & Reasons of
Bill No. 33 of 1923 which culminated in the Act of 1930 : in Appendix 5 below.
to, XIX) PROCEDURE IN A THREATS SUIT 825
Who may sue.
As already noted, any person aggrieved by threats may sue*
Interlocutory Injunction.
Reference may again be made to what has been observed, gene-
rally, in regard to interlocutory injunctions in Chapter XVII in con-
nection with an infringement suit.
Onus.
The onus will be on the Plaintiff to prove that the threats have
been made ; and the absence of infringement.
If the Plaintiff relies on threats made by agents of the Defen-
dant the onus will also be on the Plaintiff to prove the authority of
such agents. 31
It would appear if a defence uuder the proviso to Section 36 is
relied on by the Defendant, the onus of proving that the requisite
infringement suit has been brought with due diligenoe will be on the
Defendant. In practice however it will no doubt be safer for tho
Plaintiff to prove the absence of any such infringement suit or of
such diligence.
Plaint.
Since the onus, as already noted, is on the Plaintiff to prove the
threats and the absence of infringement, it appears that tho
Plaintiff may, if he knows the Patent or Patents on which the Defen-
dant is relying for his threats, plead the non-validity of such in his
Plaint. In most cases the Plaintiff will have the requisite know-
ledge : in all probability particulars of the Patent of the Defendant
will have been given in the threats. It is submitted this will be the
best course in British India, where a reply by a Plaintiff in answer
to a Written Statement by a Defendant is not common practice.
But if the Plaintiff does not know on what Patents the Defendant
has been relying for his threats, it is not possible for him to plead
specifically to the invalidity of specific Patents. In such case he
.may plead that he has not infringed any Patent of the Defendant.
And if the Defendant in his Written Statement makes a case that
certain Patents have been infringed, the Plaintiff may in British
India either obtain leave to file a Reply attacking the validity of
such Patents, in which event he will have to giv e particulars of sack
* 1 gee Dowson Taylor d> Go, r. ‘Droiophone Go, Ltd. 11 R. P. G. 69&
104
826
THE LAW OF PATENTS IN INDIA i[Ch. XIX
invalidity, or, it seems, according to the practice in British India,
he may wait until the hearing to make his case of invalidity. 32
To avoid the uncertainty of the situation that would arise
where the invalidity of the Plaintiff’s Patents has not been pleaded
with full particulars in the Plaint, it is submitted that the Defendant
in a threats suit should take the earliest opportunity either of
obtaining the requisite amendment of the Plaintiff’s Plaint or the
requisite particulars or else of obtaining an order on the Plaintiff to
file a Reply. For it will be highly inconvenient for the Defendant
to go to trial without knowing what case of invalidity the Plaintiff
intends to make at the hearing.
Particulars.
The Defendant is entitled to proper particulars of objections
in a case where the Plaintiff relics on the invalidity of the Defen-
dant’s Patent. 33
Reliefs obtainable in the suit itself : permanent injunction.
The reliefs obtainable in the suit by a successful Plaintiff
arc : —
1. A permanent injunction to restrain any repetition of
threats.
2. Damages.
3. Costs.
It would appear that if the necessary grounds mentioned in
Section 36 are established, whether or not any damages have been
proved to have been suffered, the Plaintiff in the threats suit will
be entitled to v a permanent injunction to restrain any repetition of
such threats. 34
Damages.
Where it is established that the Plaintiff by reason of the
threats has suffered damage, a decree for damages in a specific sum
*' J For the English practice whore a Reply by the Plaintiff is common form,
see Fletcher Moulton (1913 : edn.) at p. 228 citing Union Electrical Power Co. v.
Electrical Power Storage Co. 5. R. P. C. 329, and Dotcson Taylor d> Co. v.
Drosophone Co. 12. R. P. 0. 93.
*• See Fletcher Moulton (1913 : edn.) p. 228.
■* For the form in which the permanent injunction should be framed see
Ellam v. Martyn. 16. It. P. 0. 28 ; and see Colley v. Hart 6. R. P. 0. 21 ;
Ohallcndcr v. Boyle 4. R. P. C. 363 at p. 368.
Ch. XIX]
RELIEFS OBTAINABLE
827
may be obtained at the hearing, or an order for an enquiry as to
damages.
In the majority of cases it may be impossible without an
enquiry to calculate a precise figure for the damages suffered. In
many cases even with an enquiry there may bo no possibility of
arriving at any more preciso figure. In such case there will be no
benefit in having an enquiry ; and all that can be done is for some
round figure to be decreed or an estimated basis, of what is con-
sidered reasonable having regard to all the circumstances of tho
case.
The amount of damages is not restricted to the bare actual
loss shown to have been incurred on specific losses of sales, but the
Plaintiff is also entitled to damages for general loss of business
besides. It may be necessary for him however to show that such
general loss of business has been caused by the threats and is
not due to extraneous causes. 35
Damages due to the loss of a profitable contract, through tho
negotiations being broken off directly because of the threats, even
though no actual contract had as yet been entered into, have been
held recoverable. 39
Costs.
The ordinary principles as to orders for costs arc applicable
in threats suits. Costs usually follow the event. 37
But in certain English cases, as where the defence has been
successful only by reason of the immunity granted by the proviso
to the section, though the suit has been dismissed, no order has been
made as to costs. 39
Certificate.
The provisions of Sec. 32 of the Indian Act being mado
expressly only applicable in the case of “a suit for infringement
*« See Ungar v. Sugg, 8. R. P. C. 388 and 9. It. P. 0. 113 (C. A.); Skinner
▼. Perry, 11 R. P. 0. '106 ; Cars v. Bland Liyht Syndicate. LUL, 28. R. P. C. 33,
and at p. 41. Compare Driffield Co. v. Waterloo Co. 3. R. P. 0. 46 ; Jloffnuwj >('
Co. v. Salisbury , 16. R. P. C. 373 ; Home v. Johnston Bros., 38. R. P. 0. 360 ;
Pitlipel dh Co. v. Brackelsbury Melting Processes Ltd., 49. R. P. C. 73.
** See Solanite Sign Ltd. v. Wood, 50. R. P. C. 315.
* r See Fletcher Moulton (1913 : cdn.) p. 229 : and Craig v. I loading 25.
R.P. C.259(0. A.).
S^e Fletcher Moulton (1913 edn.) p. 229 note (f).
THE LAW OF PATENTS IN INDIA
{AIK
•{• Patent”' it would seem the better view that no certificate of
validity questioned can be granted in India in a suit for threats,
even though the issue o£ the invalidity of the Patent is pat in issue
and. decided , 39
• • For cases where this point has been raised in England see Crampton
v. Patents Investments Co., 5. E. P. G. 382, where a certificate was granted by
Field J* but with considerable doubt and without prejudice to the validity of
such certificate, and, Pittevil <jb Co. v. Brackelsbury Melting Processes Ltd., 49.
E. P. O. 73, where a certificate was refused. It may be noted that lor the present
purpose Sec. % of the English Act is worded similarly to Sec. 32 of the Indian
Act. It is however in England open to the Defendant (the Patentee) to counter-
claim for an injunction and damages for infringement. In a case where these
is such a counterclaim it assy be that an England a certificate of validity quastioaod
may be granted ; the suit then being traded (for the counteidaixn) as 'fe salt lor
infringement of a Patent 9 ’ within the Section. . But in India it would seem that
no such counterclaim is open to a Defendant in a suit for threats ; and that
accordingly no question arises whether a certificate can be granted hi life in
such a case,
CHAPTER XX
PROCEDURE AS TO PROCEEDINGS BEFORE HIS
EXCELLENCY THE GOVERNOR GENERAL IN
COUNCIL— PETITIONS IN JURISDICTION
OF FIRST INSTANCE— APPEALS
FROM DECISIONS OF THE
CONTROLLER.
Proceedings before H. E. The Governor General in Council.
It has already been observed in Chapter V, that in'the adminis-
tration of the Patent system in British India considerable powers
are vested in, and only to be exercised by, H. E. the Governor
General in Council. Not least among such powers is the jurisdic-
tion to dispose of appeals from the decision of the Controller at
Patents in certain instances, and in others a jurisdiction of first
instance which is unappealable.
The instances in which under the Indian Patents and Designs
Act of 1911 (as amended up to date) a jurisdiction of first instance
is given to H. E. the Governor General in Council are : —
Under Section 15 : in respect of Petitions for Extension of the
term of a Patent.
Under Sections 21 and 21A : in respect of giving his approval
for the use of a Patent by the Crown and in settling
disputes under Section 21 (4) and in giving a certificate
for secrecy under Section 21A (2).
Under Sections 22 and 23 : in respect of Petitions for a oom-
pulsory licence or revocation as the case may be.
Under Section 25 ; in respect of notifications of revocation
thereunder.
The instances in which under the act an appellate jurisdiction is
given to H. E. the Governor General in Council are : —
Under Section 5 (2 ) : from the decision of the Controller where
the Controller has refused to accept, or has refused to
accept without amendment, an application for Patent,
830 THE LAW OF PATENTS IN INDIA [Ch. XX
Under Section 9 (3) : from the decision of the Controller in
opposition proceedings.
Under Section 10 (1A) : from a direction by the Controller
under that section in regard to joint applicants.
Under Section 16 (5) : from an order by the Controller on an
application for Restoration of a lapsed Patent.
Under Section 17 (6) : from a decision by the Controller on an
application for amendment.
And under Section 69(2) : from a refusal by the Controller to
grant a patent on the ground of its being contrary to law
or morality.
Jn either case it would seem that the procedure for the forward-
ing of the Petition or the Appeal, as the case may be, and for the
disposal or hearing thereof appear to be substantially the same.
There is also a general power to give directions to the Controller
on an application therefor made by the Controller in any case of
doubt or difficulty in the administration of any of the provisions of
the Act : under Section 68.
PETITIONS
Provisions as to Procedure.
With regard to Petitions of first instance there are no material
provisions in the Act itself regulating these matters, the following
Rule however is applicable : —
In regard to petitions for Extension ; Rule 25.
In regard to petitions for a compulsory licence or for revocation
it appears that there are no Rules specifically applicable : nor in
regard to the other matters mentioned earlier in this chapter where
a jurisdiction of first instance is exercised by H. E. the Governor
General in Council.
It is to be observed that even in such matters where the prOce
dure prior to the disposal or hearing of the Petition is regulated
as indicated, the procedure connected with the actual disposal or
hearing of the Petition is unrestricted. The procedure for the
disposal of the petition or other matter is thus, it may be
assumed, a matter for the discretion of H. E. the Governor General
in Council,
Ch. XX] APPEALS FROM THE CONTROLLER 83i
In practice any directions as to matters of procedure to be given
are given by the Department of Industries and Labour. And if
special directions should in any case be desired to be obtained it is
suggested that application for such directions should be made by
letter to the Secretary to the Government of India, Department of
Industries and Labour (cither at Delhi or at Simla).
APPEALS
Appeals from the decision of the Controller.
It will be convenient before proceeding to consider tho
provisions for Appeals existing in India, first to take a brief view of
the provisions for Appeals from the Comptroller which have been
developed from similar beginnings in England. This will enable
the present position in India to be the better appreciated.
Provisions now in force in England as to appeals from decisions of
the Comptroller . 1
Under Section 92A of the English Patents & Designs Act of
1932 it has been provided as follows : —
“92A. Tribunal for appeals from the Comptroller. — (1) For the
purpose of hearing appeals from decisions of the Comptroller, which
1 The provisions which previously existed in England re yarding the dis-
posal of Appeals from the Comptroller were as follows ; — In the United
Kingdom under the Act of 1883, which by the provisions of Sec. 82 of that
Act first set up the Patent Ofiice under tho Comptroller General of Patents
on the lines upon which it exists today, an appeal lay from various decisions
of the Comptroller to the Law Officer of the Crown. At that time the Comp-
troller in the United Kingdom had no power to administer oaths or to
examine witnesses, and evidence before him had to be given in the form of statutory
declarations. See Edmunds ( 1890 : edn.) p. 5S9. In respect of the hearing of
such appeals however the Law officer was expressly given the jiowcr of examining
witnesses on oath : this was under Section 38 of the Act of 1883. The practice
and Procedure on such Appeals from decisions of the Comptroller to the Law
Officer was regulated by Rules known as the “Law Officer’s Rules” which were
made by the Law Officer of the Crown under the powers conferred by virtue of
Section 38 of the English Act of 1883. See Edmunds (1890 : edn.) p. 580.
Such Appeals continued to be heard by the Law Officers under all subsequent
English Statutes until the year 1932 when by the English Patents & Designs Act
1932, provisions were made for the hearing of such appeals by a special Appeal
tribunal, being a certain Judge of the High Court ; which provisions aro now
operative.
m THE LAW OF PATENTS IN INWA jcb. H
by virtue of this Act, are subject to an appeal to the Appeal Tribunal,
there shall be constituted a tribunal (in this Act referred to as the
"Appeal Tribunal”) to consist of a judge of the High Court to be
nominated by the Lord Chancellor.
(2) The expenses of the Appeal shall be defrayed and the fees
to be taken therein may be fixed as if the Tribunal were a court of
the High Court, but subject as aforesaid appeals to the Tribunal
shall not be deemed to be proceedings in the High Court.
(3) The Appeal Tribunal may : —
(a) examine witnesses on oath and administer oaths for
that purpose :
(b) make rules regulating appeals to the Tribunal and the
practice and proceedings before the Tribunal under
this Act ; and
(c) in any proceedings under this Act by order award to
any party such costs as the Tribunal consider reason-
able and direct how and by what parties they are to be
paid and any such order may be made a rule of court ;
so however that, as respects rights of audience and the award-
ing of costs* the like practice shall bo observed as, before the
commencement of the Patents & Designs Act, 1932, waB observed in
the hearing of appeals by the law officer.
(4) The appeal Tribunal may, if it thinks fit, obtain . the
assistance of an expert, who shall be paid such remuneration as the
Tribunal, with, the consent of the Treasury, may determine.”
It is to be noted that this Appeal Tribunal though it is
comprised of a person who in another capacity is One of H. M.
High Court Judges, in this capacity as such Appeal Tribunal
functions not as a Judge of the High Court but as the agent of the
Crown exercising the Crown’s prerogative. Just as, before the Act
of 1932, such prerogative was exercised by the Comptroller and the
Law Officer of the Crown.
The Practice and Procedure in England on the hearing of such
appeals by the Appeal Tribunal is regulated in addition to the pro-:
visions' in Section 92A ( 2 \ (3) and (4) of the English Acta 1907-1932,
by Balds known ns the Patents Appeal Tribunal Rules, 1932.*
* See Appendix 3 below.
833
Ch. XX] TO H. E. THE GOVR-GENERAL IN COUNCIL
Previous Indian Provisions.
In India, ever since (he Controller of Patents & Designs and
the Patent Office were first created (which was under the Act of
1911 by virtue of Section 55 thereof), such Appeals as have been
open under that Act from decisions of the Controller have lain to
H. E. the Governor General in Council. In this respect there has
been no change in the system throughout up to the present day.
Appeals i provisions now in force in British India.
Where an Appeal lies from a deeisioti of the Controller, such
appeal is, under the provisions of the Indian Patents & Designs Act
of 1911 now in force, in every instance to H. E. tho Governor
General in Council.
By Section 70 of the Indian Patents & Designs Act of 1911,
as amended by the Act of 1930, it is provided as follows : —
“70. (1) Where an appeal is declared by this Act to lie from
the Controller to the Governor General in Council, the appoal shall
be made within three months of the dato of the order passed by the
Controller, and shall be in writing, and accompanied by the pres-
cribed fee.
(2) In calculating the said period of three months, the time
(if any) occupied in granting a copy of the order appealed against
shall be excluded.
(3) The Governor General in Council may, if he thinks fit,
obtain the assistance of an expert in deciding such appeals, and
the decisions of tho Governor General in Council shall be final.”
By Rule 62 of the Indian 1933 Rules it is provided as
follows : —
“62(1) An appeal to the Governor General in Council, under
any provision of the Act from a decision of tho Controller shall bo
lodged with the Controller in duplicate and shall state fully the
reasons for appealing.
(2) The Controller shall forward one copy of the appeal to the
Governor General in Council through the Secretary in the Depart-
ment of Industries and Labour, who shall notify tho appellant of its
receipt.
(3) In appeals under Sections 9, 10(1A), 16 and 17 of tho
Act, the Governor General in Council may cither dismiss the appeal
105
- 834 THE LAW OF PATENTS IN INDIA fCh. tt
summarily or call upon the appellant or his agent to servo a copy
of the appeal on the respondent or his agent.
(4) When so required by the Governor General in Council*
the appellant or his agent shall forthwith furnish the respondent or
his ageht with a copy of the appeal and intimate to the Controller
the date of supply of the copy.
(5) If a copy of the appeal is supplied to the respondent or
his agent, the respondent or his agent may leave at the Office a reply
in writing within one month of the date of receipt of a copy of the
appeal. Every such reply shall deal in full with the statement of the
appeal, and shall be in triplicate.
(6) If a reply is supplied under sub-rule (5), the Controller
shall furnish the appellant or his agent with one copy thereof and
forward one copy to the Governor General in Council.
(7) After considering the appeal and the reply, if any, the
Governor General in Council may either allow the appeal or call
upon the appellant or his agent to furnish n rejoinder and, if so
called upon, the appellant or his agent shall leave at the Office a
rejoinder in writing within one month of the date of such requisition.
The rejoinder shall be confined strictly to matters in reply and shall
be in triplicate. One copy of the rejoinder shall be sent by the
Controller to the respondent or his agent and one copy to the
Governor General in Council.
(8) Oh completion of these proceedings, if any, or at such
other time as he may see fit, the Governor General in Council shall
consider the appeal together with the reply and the rejoinder, if
any, and decide the case. The decision of the Governor General in
Council shall be communicated to the Controller and to the parties
or their agents by the Secretary in the Department of Industries and
Labour.”
The appeal is required to be made on Form No. 5 (see Appendix
No. 5 below).
The fee payable in respect of the filing of such an Appeal is
Rs. 30 (as provided for in Item No. 52 of the First Schedule to the
Act which relates to fees fixed in accordance with Section 57 of
the Act).
Ch. XX]
DISPOSAL OP SUCH APPEALS
835
Powers of H. E. the Governor General in Council in respect of such
appeals.
It has been held by the Calcutta High Court that in disposing
of an appeal from a decision of the Controller under Section 9 of
the Act, that is to say a decision in proceedings in opposition to
the grant of a Patent, H. E. the Governor General in Counoil has
power to remand the matter for re-hcaring or for the taking of fresh
evidence by the Controller. The material observations in the judg-
ment of the Court (Lort-Williams and Jack JJ.), delivered by Lort
Williams J„ were as follows : —
“In this case, at first I was doubtful whether the right of
appeal to the Governor General in Council was adequate to enablo
the tribunal to grant tho remedy asked for by the applicants, that
is to say, whether the Governor General in Council under this Act
has power to remand the case to the Controller for further hearing
or re-hearing or to hear further witnesses. The power of remand
is not specifically given in the Act, whereas in tho Code of Civil
Procedure such power is specifically given to this and other Courts
in India. Rule 62 of the Act which contains the provisions relating
to appeals, makes no mention of any such power of remand. Mr.
Harwell however has drawn our attention to an unreported case,
in which he was engaged, which was tried by the Controller of
Patents in Calcutta, and from which there was an appeal to tho
Governor General in Council in which an order of rornand was
made. Moreover, I am of opinion, that all Courts of Appeal have
inherent i>owers of remand, and in this sense, I find it difficult to
distinguish tho power which has been given to tho Governor General
iu Council as a Court of Appeal from the decisions of the Controller
in Patent cases. Iu Fletcher Moulton on Patents, 1913, at pngo 284,
there is a note to the effect that the law-officer has power to send the
oase back to the Controller for re-hearing. The authority for this is
Warman’s Application. In the mailer of Chatnber’s Application for
a Patent. Lord Buckmastcr (then Sir S. C. Buckmaster, Solicitor-
General) said : — “I always regard an appeal before me strictly as a
re-hearing, and when it comes to hearing witnesses, it appears to me
there is no meaning in an appeal if the witnesses are confined to
what they said before. I understand that my predecessors have
acted in the same "way before as I have, I should certainly admit
836
THE LAW OF PATENTS IN INDIA
[Ch. XX
any evidence on both sides, unless there was some very good reason
why I should not .” 3 It is to be remembered that the Law Officer
in England was in the same position regarding appeals as the
Governor General in Council is in India. It is clear, therefore, that if
it be necessary, a remand may be ordered and further witnesses exa-
mined by the Controller, or the case may be ordered to be re-heard.”
It will be noted that in this case the Appeal Bench of the
Calcutta High Court unequivocably decided that the opponent in
the Opposition Proceedings before the Controller was entitled
to have the evidence of the witness he desired to call heard in the
Opposition Proceedings. The Writ of Prohibition was only refused
to be issued partly because the matter was no longer in the hands
of the Controller, he having given his final decision, and therefore
a writ on the Controller might be ineffective, and partly because
the learned Judges considered that the Appeal Tribunal appointed
under the Act, consisting of H. E. the G overnor General in Council,
would, in the ordinary course of procedure under the Act, itself
have a re-hearing of the opposition proceedings, (as used to be done
by the Law Officers in England), in which case it might itself hear
the evidence of the witness in question ; and considered that the
Appeal Tribunal, alternatively, if it preferred that the evidence of
the witness should be taken in tho first instance by the Controller,
had full power to remand the case for re-hearing to the Controller,
with directions that evidence of the witness in question should be
taken by him. Actually, in spite of the observations of the learned
Judges, the statutory Appeal Tribunal finally did not in fact have
any hearing itself of the Appeal or any re hearing of the Opposition
Proceedings and did not, cither, remand the case to the Controller
for re-hearing. The evidence of the witness in question was never
heard. No opportunity for argument of the merits of the appeal
• In spite of the above observations it would appear that the mode of the
disposal of an Appeal by H. E. the Governor General in Council is not in all
cases the same' as that adopted by the Law Officers in England, which is referred
to in the above judgment ; on certain of tho rare occasions when an Apj>eal
has been sought to be put forward to II. E. the Governor General in Council,
though the case has been one of the highest importance to the parties as well as to
the public in India, a procedure has been adopted for its disposal whereby there
has been no hearing of the Appeal at all and nothing more than a disposal of the
Appeal on paper.
837
Ch. XX]
was ever afforded to tho Appellant or bis representatives ; and
none of the parties or their representatives were heard by anyone
on the appeal. After moro than one year had elapsed from tho date
of the filing of the appeal against the decision of tho Controller,
the Appellant, that is to say the opponent to the grant of tho
Patent in question, was briefly informed by an official communica-
tion in writing to the effect that H. E. the Governor-General
in Council saw no reason to interfere with the decision of tho
Controller.
If the procedure followed in that case were to be taken as a
precedent in future for tho disposal of appeals from tho Controller
under the Indian Patents and Designs Act, it is submitted that such
a practice would not be in keeping with the Act.
With whatever degree of care a case may have been
considered on paper by the various departments and oflicials of
Government to whom it may have been circulated during the year
which may elapse (as in the last mentioned case) before the final
decision is given, it may be doubted, it is respectfully submitted,
whether such a method of disposing of an nppeal from the Con-
troller merely on paper, without any hearing of the parties or their
representatives — 30 fundamentally different from the procedure of
a full hearing of the appeal which has always been adopted under
similar provisions of the English Act in England ever since the
offioe of Comptroller of Patents was first created — can in truth be
considered a proper compliance with the provisions of the Indian
Patents and Designs Act, which expressly enacted that there should
be from such decisions of the Controller, a right of appeal . 4
4 See also at p. 433 above. The process of nppeal to H. K. the Governor
General is in practice cumbersome, expensive and delayed. In practice it
appears to take at leaBt a year or more from the dale of the decision of
the Controller appealed against, before such an appeal is disposed of, no
matter how small may be the point to bo decided. It may be that it is
considered at present that the scarcity of such appeals does not warrant
any alteration in the system. This may be so at present, though the
scarcity itself may be partially due to the difficulties which lie in the
path of an appellant under the present system. Certainly when the volume
of Patent business increases, it would seem desirable that a system similar
to the system now in force in the United Kingdom might be adopted ;
of having such appeals decided by an Appeal Tribunal for which a Judge
of a High Court is chosen. In the meantime it may be considered whether
the early introduction of such a system now ( when there would be but little
pending business to be interfered with and the switch-over from one system
to the other could be made with no difficulty, might not be a more simple matter
administratively than a change later, if such change is in any event to be effected.
THE LAW OF PATENTS IN INDIA
(Clk XX
It is respeotfully submitted that H. E. tho Governor-General
in Council, for the disposal of suob appeals from decisions of the
Controller, has ample powers under the current Indian Act to have
a full hearing of the parties or their representatives on sueh an
appeal — as in England ; and that only by thus affording a full
hearing of suoh an appeal will the rights of the parties be fully
protected and the provisions of the Act, which create this right of
Appeal, be satisfactorily fulfilled,
APPENDICES
APPENDIX I
THE STATUTE OF MONOPOLIES OF 1623
being 21 Jac. I. C. 3.
An act concerning Monopolies and Dispensations with Penal
Laws, and the Forfeitures thereof . 1
Forasmuch as Your most excellent Majesty, in your Royal
Judgment, and of your blessed Disposition to the Weal and Quiet
of your Subjects, did in the year of our Lord God One Thousand
six hundred and ten, publish in Print to the whole Realm, and to all
posterity, that all Grants and Monopolies, and of the Benefit of any
Penal Laws, or of Power to dispense with the Law, or to compound
for the Forfeiture, are contrary to Your Majesty's Laws, which Your
Majesty's declaration is truly consonant and agreeable to the ancient
and fundamental Laws of this your Realm : And whereas Your
Majesty was further graciously pleased, expressly to command, that
no Suiter should presume to move your Majesty for matters of that
Nature ; yet nevertheless upon Misinformations, and untrue Preten-
ces of Publick Good, many such Grants have been unduly obtained,
and unlawfully put in Execution, to the great Grievance and Incon-
venience of Your Majesty's Subjects, contrary to the Laws of this
Your Realm, and contrary to Your Majesty's most Royal and
Blessed Intention so published as aforesaid ; For avoiding whereof,
and preventing of the like in time to come, may it please Your
Majesty, at the humble Suit of the Lords Spiritual and Temporal,
and the Commons, in this present Parliament assembled, that it may
be declared and enacted ; and be it declared and enacted by the
Authority of this present Parliament, That all Monopolies, and all
Commissions, Grants, Licences, Charters and
▼old. MOnOP ° Me * ° tC Letters Patents heretofore made or granted, or
hereafter to be made or granted, to any Person
or Persons, Bodies Politick or Corporate whatsoever, of or for the
sole buying, selling, making, working or using of any Thing within
this Realm, or the Dominion of Wales, or of any other Monopolies
1 The effect of the Statute is discussed at page 13 above.
106
842
THE LAW OF PATENTS IN INDIA
or of Power, Liberty or Faculty, to dispense with any others, or to
give Licence or Toleration to do, use or exercise any Thing against
the Tenor or Purport of any Law or Statute ; or to give or make
any Warrant for any such Dispensation, Licence or Toleration to be
had or made ; or to agree or compound with any others for any
Penalty or Forfeitures limited by any Statute » or of any Grant or
Promise of the Benefit, Profit or Commodity of any Forfeiture,
Penalty or Sum of Money, that is or shall be due by any Statute,
before Judgment thereupon had ; and all Proclamations, Inhibitions,
Restraints, Warrants of Assistance and all other Matters and Things
whatsoever, any way tending to the instituting, erecting, strengthen-
ing, furthering or countenancing of the same or any of them ; are
altogether contrary to the laws of this Realm, and so are and shall
be utterly void and of none effect, and in no wise to be put in Use
or Execution.
II. And be it further declared and enacted by the Authority
aforesaid, That all Monopolies, and all such Commissions, Grants,
Licences, Charters, Letters Patents, Proclama-
how tHed 0P ° ,,e * tions, Inhibitions, Restraints, Warrants of Assis-
tance, and all other Matters and Things tending
as aforesaid, and the Force and validity of them and of every of
them, ought to be and shall be for ever hereafter examined, heard,
tried and determined by and according to the Common Laws of this
Realm, and not otherwise.
[See page 13 above.\
III. And be it further enacted by the Authority aforesaid,
That any Person and Persons, Bodies Politick and Corporate whatso-
ever, which now are or hereafter shall stand and
forbidden. 01 * 0116 " be disabled and uncapable to have, use, exercise
or put in Use any Monopoly, or any such Com-
mission, Grant, Licence, Charter, Letters Patents, Proclamation,
Inhibition, Restraint, Warrant of Assistance or other Matter or
Thing tending as aforesaid, or any Liberty, Power or Faculty,
grounded or pretended to be grounded upon them or auy of them.
IV. And be it further enacted by the Authority aforesaid,
That if any Person or Persons at any Time after the End of Forty
grieved by ^ a y® n<?x * a ^ er *be End of this present Session
pretext of Monopoly of Parliament, shall be hindered, grieved, distur-
**■ bed or disquieted, or his or their Goods 'or
APPENDIX I
843
Chattels any way seized, attached, distrained, taken, carried away or
detained, by ocoasion or pretext of any Monopoly, or of any such
Commission, Grant, Licence, Power, Liberty, Faculty, Letters
Patents, Proclamation, Inhibition, Restraint, Warrant of Assistance
or other Matter or Thing tending as aforesaid, and will sue to be
relieved in or for any of the Premises ; that then and in every such
case, the same Person and Persons shall and may have his and their
Remedy for the same at the Common Law, by any Action or Actions
Remedy, to be grounded upon this Statute ; the samo
Action and Actions to be heard and determined
in the Courts of King’s Bench, Common Pleas and Exchequer, or in
any of them, against him or them by whom he or they shall be so
hindered, grieved, disturbed or disquieted, or against him or them by
whom his or their Goods or Chattels shall be so soized, attached, dis-
trained, taken, carried away or detained ; wherein all and every such
Person and Persons which shall be so hindered, grieved, disturbed or
disquieted, or whose Goods or Chattels shall be so seized, attached,
distrained, taken, carried away or detained, shall recover Three
Treble Damages. Times so much as the Damages which he or
they sustained by means or occasion of being
so hindered, grieved, disturbed or disquieted, or by means of having
his or their Goods or Chattels seized, attached, distrained, taken,
carried away or dotainod, and double Costs ; and in such Suits, or
for the staying or delaying thereof, no Essoin, Protection, Wager of
Double Costs. Law, Aid Prayer, Privilege, Injunction or Order
of Restraint, shall be in any wise prayed, grant-
ed, admitted or allowed, nor any more than one Imparlance : And if
any Person or Persons shall after Notice given that the Action
depending is grounded upon this Statute, cause or procure any
Delaying Action Action of the Common Law, grounded upon
this Statute, to be stayed or delayed before
Judgment, by colour or means of any Order, Warrant, Power or
Authority, save only of the Court wherein such action as aforesaid
shall be brought and depending, or after Judgment had upon such
Action, shall cause or procure the Execution of or upon any such
Judgment to be stayed or delayed by colour or means of any Order,
Warrant, Power or Authority, save only by Writ of Error or
Attaint ; that then the said Person and Persons so offending shall
incur and sustain the PainB, Penalties and Forfeitures ordained
Double Costs.
Delaying Action.
844
THE LAW OF PATENTS IN INDIA
and provided by the Statute of Provision and Praemunire made
Praemnnire. in the Sixteenth Year of the Reign of King
ie H. a. e. B. Richard the Second.
Y. Provided nevertheless, and be it declared and enacted.
That any Declaration before mentioned shall not extend to any
Letters Patents and Grants of Privilege for the Term of One and
twenty Years or under, heretofore made, of the sole working or
making of any manner of new Manufacture within this Realm, to
the first and true Inventor or Inventors of such Manufactures,
which others at the time of the making of such Letters Patents and
Proviso lor new Grants did not use, so they be not contrary to
Manufactures for 21 the Law, nor mischievous to the State, by rais-
ing of the Prices of Commodities at home, or
hurt of Trade, or generally inconvenient ; but that the same shall be
of such Force as they were or should be, if this Act had not been
made, and of none other ; And if the same were made of more than
One and twenty Years, that then the same for the Term of One and
twenty Years only, to be accounted from the Date of the first
Letters Patents and Grants thereof made, shall be of such Force as
they were or should have been, if the same had been made but for
Term of One and twenty Years only, and as if this Act had never
been had or made, and of none other.
VI. Provided also, and be it declared and enacted, That any
Declaration before mentioned shall not extend to any Letters
For 14 Years Patents and Grants of Privilege for the Term of
Fourteen Years or under, hereafter to be made,
of the Bole working or making of any manner of new Manufactures
within this Realm, to the true and first Inventor and Inventors of
such Manufactures, which others at the time of making such Letters
Patents and Grants shall not use so as also they be not contrary to
the Law, nor mischievous to the State, by raising Prices of Commo-
dities at home, or Hurt of Trade, or generally inconvenient ; the
said Fourteen Years to be accounted from the Date of the first
Letters Patents, or Grant of such Privilege hereafter to be made,
but that the same shall be of such Force as they should be, if this
Act had never been made, and of none other.
[The effect of Sec. 6 is discussed at pages 14 and 15 above. See
also page 112 et seq : as ta.the meaning of the phrase u manner
APPENDIX I
845
Proviso.
Proviso for War-
rants to Justices.
of new manufacture .” Compare Sec. 2 ( 8 ) and Sec. 2 (10) of
the Indian Act of 1911.']
VII. Provided also, and it is hereby further intended, de-
clared and enacted by Authority aforesaid, That this Act or any
Thing therein contained shall not in any wise
extend or be prejudicial to any Qrant or Privi-
lege, Power or Authority whatsoever heretofore made, granted,
allowed or confirmed by any Act of Parliament, now in force so long
as the same shall so continue in force.
VIII. Provided also, that this Act shall not extend to any
Warrant, or Privy Seal made or directed, or to bo made or directed
by His Majesty, His Heirs or Successors to
the Justices of the Court of the King’s Bench
or Common Pleas, and Barons of the Exchequer,
Justices of Assize, Justices of Oyer and Terminer and Gaol-delivery,
Justices of the Peace and other Justices for the time being, having
Power to hear and determine Offences done against any Penal
Statute, to compound for the Forfeiture of any Penal Statute,
depending in Suit and Question before them or any of them respec-
tively, after Plea pleaded by the Party Defendant.
IX. Provided also, and it is hereby further intended, declared
and enacted, That this Act or any Thing therein contained shall
not in any wise extend or be prejudicial unto
ters to (Corporations! 1 " the City of London, or to any City, Borough or
Town Corporate within this Realm, for or
concerning any Grants, Charters or Letters Patents, to them or any
of them made or granted, or for or concerning any Custom or
Customs used by or within them or any of them ; or unto any
Corporations, Companies or Fellowships of any Art, Trade, Occupa-
tion or Mystery, or to Companies or Societies of Merchants within
this Realm, erected for the Maintenance, Enlargement or ordering
of any Trade of Merchandize ; but that the same Charters, Customs,
Corporations, Companies, Fellowships and Societies, and their
Liberties, Privileges, Powers and Immunities, shall be and continue
of such Force and Effect as they were before the making of this
Act, and of. none other ; any Thing before in this Act contained to
the contrary in any wise notwithstanding.
X. Provided also, and be it enacted, That this Act, or any
846
THE LAW OP PATENTS IN INDIA
Declaration, Provision, Disablement, Penalty, Forfeiture or other
Proviso for Let- thing before mentioned, shall not extend to any
tars Patents that con-
cern Printing &c.
Letters Patents or Grants of Privilege hereto-
fore made, or hereafter to be made, of, for or
concerning Printing, nor to any Commission, Grant or Letters
Patents heretofore made, or hereafter to be made, of, for or concern-
ing the digging, making or compounding of Salt-petre or Gunpowder,
or the casting or making of Ordnance, or Shot for Ordnance, nor
to any Grant or Letters Patents heretofore made, or hereafter to
be made of any Office or Offices heretofore erected made or
ordained, and now in being and put in Execution, other than such
Offices as have been described by any his Majesty’s Proclamation
or Proclamations ; But that all and every the same Grants, Commis-
sions and Letters Patents and all other Matters and Things tending
to the maintaining, strengthening and Furtherance of the same, or
any of them, shall bo and remain of the like Force and Effect, and
no other and as free from the Declarations, Provisions, Penalties
and Forfeitures contained in this Act, as if this Act had never been
had nor made, and not otherwise.
XI. Provided also, and be it enacted, That this Act or any
Declaration, Provision, Disablement, Penalty, Forfeiture or other
Thing before mentioned, shall not extend to
ior jUium'mn!oo 8Sl0nB ar, y Commission, Grant, Letters Patents or
Privilege heretofore made, or hereafter to be
made, of, for or concerning the digging, compounding or making of
Allum or Allum Mines, but that all and every the same Commis-
sions, Grants, Letters Patents and Privileges shall be and remain
of the like Forces and Effect, and no other, and as free from the
Declarations, Provisions, Penalties and Forfeitures contained in
this Act, as if this Act had never been had nor made, and not
otherwise.
XII. Provided also, and be it enacted, That this Act, or
any Declaration, Provision, Penalty, Forfeiture or other Thing
before mentioned, shall not extend or be pre-
NewcMti^npon^ine! judicial to any Use, Custom, Prescription,
Franchise, Freedom, Jurisdiction, Immunity,
Liberty or Privilege heretofore claimed, used or enjoyed by the
Governors and Stewards, and Brethren of the Fellowship of the
APPENDIX I
84 *
Haft-men of the Town of Newcastle upon Tine, or by the ancient
Fellowship, Guild or Fraternity, commonly called Hoaft-men, for or
concerning the selling, carrying, lading, disposing, shipping, venting
or trading of or for any Sea-coals, Stone-coals or Pitcoals forth or
out of the Haven and River of Tine ; or to any Grant made by the
said Governor and Stewards, and Brethren of the Fellowship of the
said Hoaft-men, to the late Queen Elizabeth of any Duty or Sum
of Money to be paid for or in respect of any such Coals as afore-
said ; nor to any Grants, Letters Patents or
Commission, heretofore granted, or hereafter to
be granted, of, for or concerning the licensing
of the keeping of any Tavernor Taverns, or selling, utterly or retail-
ing of Wines to be drunk or spent in the Mansion House or Houses,
or other Place in the Tenure or Occupation of the Party or Parties
so selling or uttering the same or for or concerning the making of
any Compositions for such Licences, so as the Benefit of such Com-
positions be reserved and applied to and for the Use of His Majesty,
His Heirs or Successors, and not to the private Use of any other
person or persons.
And Licences of
keeping Taverns.
(Proviso for Letters Patents to Sir Robert Mansel Knight, or
to James Maxewell Esquire, concerning the Exportation of Calve
Skins §. 13).
(And for Letters Patents granted to Abraham Baker for
making of Smalt, &c. And for Privilege granted to Edward Lord
Dudley for melting of Iron Ewer, &c. §. 14.)
APPENDIX II
CONCERNING REPEALED ENGLISH STATUTES
For the purposes of this Book it is unnecessary to insert in full the English
Statutes which have been repealed. The extra quantity of this matter would
make the book unduly bulky and the increased utility to the reader would be
but small in comparison.
For the reader’s convenience, however, the references to the principal
Statutes, which have been so repealed, are collected and noted here : —
1. Lord Brougham’s Act 1835. An Act to amend the Law touching
Letters Patent for Inventors. (10th September 1835) : 5 & 6 Will. 4, c. 83.
(This Act was repealed by Section 113 of the Act of 1883.)
2. 2 & 3 Viet., c. 67. An act to amend an Act of the fifth and sixth years
of the reign of King William the Fourth, intituled “An Act to amend the law
touching Letters Patent for Inventions. 1 ' (24th Aug. 1839.)
3. 7 & 8 Viet., c. 69. An Act for amending an Act passed in the Fourth
Year of the Reign of his late Majesty, intituled “An Act for the better Adminis-
tration of Justice in his Majesty's Privy Council,” and to extend its Jurisdiction
and Powers. (Sec Sections 2, 3, 4, 5, 6 & 7 only as relating to Patents.) (6th
August 1814).
(Section 2, 3, 4 & 5 were repealed by Section 113 of the Act 1883 ; and
Sections 6 & 7 were repealed by Statute Law Revocation (No. 2) Act of 1874.)
4. 14 Viet. c. 8. The Protection of Inventions Act, 1851 : An Act to
extend the Provisions of the Designs Act, 1850, and to give Protection from
Piracy to Pei*&ons exhibiting new Inventions in the Exhibition of the Works
of Industry of all Nations in One thousand eight hundred and fifty-one. (11th
April 1851.)
(This Act was repealed by the Statute Law Revocation Act, 1875.)
5. 14 & 15 Viet. c. 82. An Act to simplify the Forms of Appointment to
certain Offices, and the manner of passing Grants under the Great Seal. (7th
August 1851.)
(This Act was repealed by 47 & 48 Viet. c. 30 Section 5.)
6. 15 Viet. c. 6. An Act for extending the Term of the Provisional Regis-
tration of Inventions under “The Protection of Inventions Act 1851."
(This Act was repealed by the Statute Law Revocation Act, 1875.)
?. 15 & 16 Viet. c. 83. The Patent Law Amendment Act 1852. An Act
for amending the Law of granting Patents for Inventions. (1st July 1852.)
(This Act was repealed by Section 113 of the Patents & Designs Act of
1883.)
APPENDIX II
849
8. 16 Viet. c. 5. An Act to substitute Stamp Duties for Fees on passing
Letters Patent for Inventions, and provide for the Purchase for the public Use
for certain Indexes of Specification. (21st February 1853.)
(This Act was repealed by Section 113 of the Patents & Designs Act,
1883.)
9. 16 & 17 Viet. c. 115. An Act to amend certain Provisions of the Patent
Law Amendment Act, 1852, in respect of the transmission of certified Copies of
Letters Patent and Specifications to certain Offices in Edinburgh and Dublin, and
otherwise to amend the said Act. (20th August 1853.)
(This Act was repealed by Section 113 of the Patents & Designs Act,
1883.)
10. 22 Viet. c. 13. An Act to amend the Law concerning Patents for
Inventions with respect to Inventions for improvements in Instruments and
Munitions of War. (8th April 1859.)
(This Act was repealed by Section 113 of the Patents & Designs Act,
1883.)
11. 28 Viet. c. 3. The Industrial Exhibitions Act, 18C5 : An Act for the
Protection of Inventions and Designs exhibited at certain Industrial Exhibitions
in the United Kingdom. (27th March 1865.)
12. 33 & 34 Viet. c. 27. The Protection of Inventions Act, 1870 : An Act
for the Protection of Inventions exhibited at International Exhibitions in the
United Kingdom. (14th July 1870.)
(This Act was repealed by Section 113 of the Patents and Designs Act,
1883.)
13. 43 and 44 Viet. c. 10. The Great Seal Act, 1880 : An Act to amend
the Law respecting the Manner of passing Grants under the Great Seal, and
respecting Officers connected therewith. (2nd Angust 1880.)
(This Act was repealed by Section 113 of the Patents and Designs Act,
1883.)
14. 45 and 46 Viet. c. 72. The Revenue Friendly Societies and National
Debt Act, 1882. An Act for amending the Laws relating to Customs and Inland
Revenue, and Postage and other Stamps, and for making further Provision
respecting the National Debt, and Charges payable out of the Public Revenue,
or by the Commissioners for the Reduction of the National Debt ; and for other
purposes.
15. 46 and 47 Viet. c. 57. The Patent Designs and Trade Marks Act, 1883. •
An Act to amend and consolidate the Law relating to Patents for Inventions,
Registrations of Designs and of Trade Marks.
(The whole of this Act, except Sec. 20 (5), Sec. 26 (6) and Sec. 26 (7), Sec. 29,
Sec. 47(2) and Sec. 47(3) and Sec. 48 thereof, was repealed by Sec. 98 of the
Patents and Designs Act, 1907).
16. 48 and 49 Viet. c. 63, The Patents, Designs, and Trade Marks (Amend*
107
860
THE LAW 0 £ PATENTS IN INDIA
meat) Act 1885. An Act to amend the Patents and Designs and Trade Marks
Act 1883.
(This Act was repealed by Section 98 of the Act of 1907.)
17. 49 and 50 Viet. c. 37. The Patents Act, 1886. An Act to remove
certain doubts respecting the construction of the Patents, Designs and Trade
Marks Act, 1883, so far as respects the drawings by which specifications are
required to be accompanied, and as respects exhibitions. (25th June 1886.)
(This Act was repealed by Section 98 of the Act of 1907.)
18. 51 and 52 Viet. c. 50. The Patents, Designs and Trade Marks Act 1888.
An Act to amend the Patents, Designs and Trade Marks Act 1883.
(This Act was repealed by Section 98 of the Act of 1907.)
Note the four last mentioned Acts were cited as “The Patents, Designs and
Trade Marks Acts, 1883 to 1888.”
19. The Patents Act 1901 : 1 Edw. 7. c. 18. (This Act was repealed by
Section 98 of the Act of 1907.)
20. The Patents Act 1902 : 2 Edw. 7. c. 34. An Act to amend the law with
reference to applications for patents and compulsory licences, and other matters
connected therewith. (18th Dec. 1902.)
(This Act was repealed by Section 98 of the Act of 1907.)
21. The Patents and Designs (Amendment) Act, 1907 : 7 Edw. 7. c..28.
(This Act was repealed by Section 98 of the Patents and Designs Act, 1907.)
APPENDIX
III
CURRENT ENGLISH STATUTES AND RULES
CONTENTS
N. B. None of these are directly operative in India since , of
course , the Statutes and Rules here referred to have no legal effect at
all in India . It will however frequently be found useful in practice
by practitioners in India to refer to these English Statutes and Eng-
lish Rules e.g. for comparison with the Indian Act and Rules and
in connection with references to English cases , the principles of
which may be enforced in the Courts in India .
1. English Patents and Designs Acts 1907-1932.
2. English Register of Patent Agents Rules
(Statutory Rules and Orders No. 820 of 1932 : dated 4th
October 1932).
3. English Patents Rules 1932.
(Statutory Rules and Orders No. 873 of 1932 : dated 25th
. October 1932).
4. English Patents Appeal Tribunal Rules, 1932.
(Statutory Rules and Orders No. 887 of 1932 : dated 31st
October 1932).
5. Certain English Rules of the Supreme Court being Order
53A and certain other Rules which relate directly to
Patents,
THE PATENTS AND DESIGNS ACT, 1907
(7 Edw. 7, c. 29.)
(As amended up to 12th July 1932)
Arrangement of Sections.
PART I
PATENTS
Application for and Grant of Patent.
Sect. Page.
1. Application ... ... ... 858
2. Specification ... ... ... 858
3. Proceedings upon application ... ... 859
4. Provisional protection ... ... ... 860
5. Time for leaving complete specification ... 860
6. Comparison of provisional and complete speci-
fication ... ... ... 860
7. Investigation of previous publications in United
Kingdom on applications for patents ... 861
8. Investigation of specifications published subse-
quently to application ... ... 863
8A. Time for acceptance of complete specification ... 863
9. Advertisement on acceptance of complete speci-
fication ... ... ... 864
10. Effect of acceptance of complete specification ... 864
11. Opposition to grant of Patent ... ... 864
12. Grant and Sealing of patent ... ... 866
13. Date of patent ... ... ... 868
14. Effect, extent, and form of patent ... ... 868
15. Fraudulent applications for patents ... ... 869
16. Single patent for cognate inventions ... ... 869
Term of Patent.
17. Term of patent ... ... ... 870
18. Extension of term of patent ... ... 870
J.9, Patents of addition ... ... ... 871
654
THE LAW OF PATENTS IN INDIA
Restoration of lapsed Patents.
Sect. Page
20. Restoration of lapsed patents ... ... 872
Amendment of Specification.
21. Amendment of specification by Comptroller ... 873
22. Amendment of specification by the court ... 875
23. Restriction on recovery of damages ... ... 875
Compulsory Licences and Revocation.
24. Provisions as to patents indorsed “Licences of
right'*. ... ... ... 875
25. Revocation of patent ... ... ... 879
26. Power of Comptroller to revoke patents ... 881
27. Provisions for the prevention of abuse of monopoly
rights ... ... ... 882
Register of Patents.
28. Register of patents ... ... ... 888
Crown.
29. Right of Crown to use patented inventions ... 889
30. Assignment to Secretary for War or Secretary for
Air or the Admiralty of certain inventions ... 890
Legal Proceedings.
31. Hearing with assessor ... ... ... 892
32. Power to counterclaim for revocation in an action
for infringement ... ... ... 892
32A. Power of court in infringement action as regards
relief in respect of particular claims ... 893
33. Exemption of innocent infringer from liability for
damages ... ... ... 894
34. Order for inspection, etc. in action ... ... 894
35. Certificate of validity questioned and costs
thereon ... ... ... 894
36. Remedy in case of groundless threats of legal
proceedings ... ... 895
APPENDIX 111
85&
Miscellaneous.
Sect.
Page
37.
Joint ownership of a patent
Ml
895
38.
Avoidance of certain conditions attached to
the
sale, etc. of patented articles
...
896
38A.
Chemical products and substances intended
for
food or medicine
■ • •
898
39.
(Repealed by Sec. 12 of 9 and 10 Geo. 5. c. 80)
40.
(Repealed by the Act of 1932)
41.
Provisions as to anticipation
• • •
899
42.
Disconformity
...
900
43.
Patent on application of representative of deceased
inventor
• ••
900
44.
Loss or destruction of patent
. • •
900
44 A.
Request for information as to patent or patent
application
• . .
901
45.
Provisions as to exhibitions
• , .
901
46.
Publication of journal, indexes, etc.
Ml
902
47.
Patent Museum
• ••
902
48.
Special provisions as to vessels, aircraft and land
vehicles
• M
902
PART II
DESIGNS
Registration of Designs.
49.
Application for registration of designs
Ml
—
50.
Registration of designs in new classes
■ A •
—
51.
Certificate of registration
. . .
—
52.
Register of designs
—
Copyright in registered Designs.
53.
Copyright on registration ...
. A .
—
54
Requirements before delivery on sale . . .
• • •
—
55.
Effect of disclosure on copyright
A . .
—
56.
Inspection of registered designs
• • •
—
67.
Information as to existence of copyright
* • ■
—
58.
Cancellation of registration of designs
• A •
—
58A.
Registration of designs to bind the Crown
. . .
—
856 THE LAW OP PATENTS IN INDIA
Industrial and International Exhibitions.
Sect. Page
59. Provisions as to exhibitions ... ... —
Legal Proceedings.
60. Piracy of registered design ... ... —
61. Application of certain provisions of the Act as to
patents to designs ... ... ... —
PART III
GENERAL
Patent Office, and Proceedings thereat.
62. Patent office ... ... ... 904
63. Officers and clerks ... ... ... 904
64. Seal of Patent Office ... ... ... 904
Fees.
65. Fees ... ... ... 905
Provisions as to Registers and other Documents
in Patent Office.
66. Trust not to be entered in registers ... ... 905
67. Inspection of and extracts from registers ... 905
68. Privilege of reports of examiners ... ... 905
69. Prohibition of publication of specification, draw-
ings, etc. where application abandoned etc. ... 906
70. Power for Comptroller to correct clerical errors ... 906
71. Registration of assignments, etc. ... ... 907
72. Rectification of registers by court ... ... 907
Powers and Duties of Comptroller.
73. Exercise of discretionary power by Comptroller ... 908
73 A. Costs and security for costs ... ... 908
74. (Repealed by the Act of 1932) ~
75. Refusal to grant patent, etc. in certain cases ... 909
76. Annual reports of Comptroller ... ... 909
Evidence ete.
77. Evidence before Comptroller ... ... 909
78. Certificate of Comptroller to be evidence ... 910
APPENDIX III 85$
Sect. Page
79. Evidence of documents in Patent Office ... 910
80. (Repealed by the Act of 1932). , —
81. Application end notices by post ... ... 910
82. Excluded days ... ... ... 910
83. Declarations by infant, persons of unsound mind,
eto. ... ... ... 910
83A. Enforcement of order for grant of licence ... 911
Register of Patent Agents.
84. Registration of patent agents ... ... 911
85. Agents for patents ... ... ... 912
Powers, etc. of Board of Trade.
86. Power for Board of Trade to make general rules ... 913
87. Proceedings of the Board of Trade ... ... 914
88. Provision as to Order in Council ... ... 914
Offences.
89. Offences ... ... ... 914
90. Unauthorised assumption of Royal Arms ... 915
International and Colonial Arrangements.
91. International and Colonial arrangements ... 916
Definitions.
92. Provisions as to “the court" ... .,. 9J.8
92A. Tribunal for appeals from the Comptroller ... 918
93. Definitions ... ... ... 919
Application to Scotland, Northern Ireland, and
the Isle of Man.
94. Application to Scotland ... ... ... 921
95. Application to Northern Ireland ... ... 923
96. Isle of Man ... ... ... 923
Repeal, savings, and Short Title
97. Saving for prerogative ... ... ... 923
98. Repeal and savings ... ... ... 923
99. Short title and commencement ... ... 924
SCHEDULES ... . ... ..k ' 925
108
558 THE LAW OF PATENTS IN iNbM
An act to consolidate the enactments relating to Patents for
Inventions and the Registration of Designs and certain enactments
r dating to Trade Marks.
[Printed (in accordance with 22 & 23 Geo. 5, c. 32, s. 14) as
amended up to 12th July, 1932 by the Patents and Designs Act, 1914
(4 & 5 Geo. 5, c. 18) the Patent and Designs Act, 1919 (9 & 10 Geo.
5, c. 80), the Patents and Designs (Convention) Act, 1928 (18 Geo. 5,
c. 3) and tho Patents and Designs Act, 1932 (22 & 23 Geo. 5, c. 32.)]
PART I
PATENTS
Application for and Grant of Patent
1. Application. — (1) An application for a patent may be
made by any person who claims to be the true and first inventor of
an invention, whether he is a British subject or not, and whether
alone or jointly with any other person.
[Sec. 3 of the Indian Act.]
(2) The application must be made in the prescribed form, and
must be left at, or sent by post to, the Patent Office in the prescribed
manner.
[Sec. 3(2) of the Indian Act.]
(3) The application must contain a declaration to the effect
that the applicant i& in possession of an invention, whereof he, or in
the case of a joint application one at least of the applicants, claims
to be the true and first inventor, and for which he desires to obtain
a patent, and must be accompanied by cither a provisional or com*
plete specification.
[Sec. 3(3) of the Indiau Act.]
(4) The declaration required by this section may be either a
statutory declaration or not, as may be prescribed.
2. Specifications. — (1) A provisional specification must des*
cribe the nature of the invention.
(2) A complete specification must particularly describe and
ascertain the nature of the invention and the manner in which the
same is to be performed.
APPENDIX III
(3) In the case of any provisional or complete specification
where the Comptroller deems it desirable he may require that suitable
drawings shall be supplied with the specification, or at any time
before the acceptance of the same, and such drawings shall be
deemed to form part of the said specification.
(4) A specification, whether provisional or complete, must
commence with the title, and in the case of a complete specification
must end with a distinct statement of the invention claimed.
(5) Where the invention in respect of which an application is
made is a chemical invention, then subject to the prescribed rules,
typical samples and specimens shall, if in any particular case the
Comptroller considers it desirable so to require, be furnished beforo
the acceptance of the complete specification, and the applicant shall
be at liberty, where he so desires, and subject to the prescribed rules,
so to furnish any typical samples and specimens, unless the Comp-
troller in any particular case considers that it is undesirable that
any should be received.
[Compare Sec. 4 of the Indian Act.]
3. Proceedings upon application. — (I) The Comptroller shall
refer every application to an examiner.
[Compare Sec. 5 of the Indian Act.]
(2) If the examiner reports that the nature of the invention
is not fairly described, or as respects a complete specification that the
nature of the invention or the manner in which it is to bo performed
is not therein particularly described and unccrtained, or that the
application, specification, or drawings have not been prepared in the
prescribed manner, or that the title docs not sufficiently indicate the
subject-matter of the invention, the Comptroller may refuse to accept
the application or require that the application, specification, or
drawings be amended before he proceeds with the application ;
and in the latter case the application shall, if the Comptroller so
directs, be deemed to have been made on the date on which the re-
quirement is complied with.
(3) The Comptroller may, where the application was accom-
panied by a specification purporting to be a complete specification,
if the applicant so requests, treat the specification as a provisional
specification and proceed with the application accordingly,
800
THE LAW OF PATENTS IN INDIA
(4) The Comptroller may, where the applicant before accept-
ance of the complete specification so requests and upon payment by
the applicant of the prescribed fee, direct that the application Bhall
be deemed to have been made on such date within a period of six
months running from the date when the application was actually
made, as the applicant may request.
(5) The applicant may appeal from any decision of the Comp-
troller under this section to the Appeal Tribunal, who shall, if re-
quired, hear the applicant and the Comptroller, and may make an
order determining whether and subject to what conditions (if any)
the application shall be accepted.
(6) The Comptroller shall, when an application has been
accepted, give notice thereof to the applicant.
4. Provisional protection. — An invention may, during the
period between the date of an application for a patent therefor and
the date of scaling a patent on that application be used and pub-
lished without prejudice to that patent, and such protection from
the consequences of use and publication is in this Act referred to
as provisional protection.
In this section the expression “date of an application for a
patent” means, as respects an application which is post-dated or
ante-dated under this Act, the date to which the application is so
post-dated or ante-dated, and means, as respects any other applica-
tion, the date on which it is actually made.
5. Time for leaving complete specification. — (1) If the
applicant does not leave a complete specification with his applica-
tion, he may leave it at any subsequent time within twelve months
from the date of the application :
Provided that where an application is made for an extension
of the time for leaving a complete specification, the Comptroller
shall, on payment of the prescribed fee, grant an extension of time
to the extent applied for but not exceeding one month.
(2) Unless a complete specification is so left the application
shall be deemed to be abandoned,
6. Comparison of provisional and complete specification. —
(1) Where a complete specification is left after a provisional specifi-
cation, the Comptroller shall refer both specifications to an examiner,
APPENDIX III
8 &
(2) If the examiner reports that the nature of the invention
or the manner in which it is to be performed is not particularly
described and ascertained in the complete specification or that the
complete specification or drawings have not been prepared in- the
prescribed manner, the Comptroller may refuse to accept the cbm<*.
plete specification until it has been amended to his satisfaction.
(3) If the examiner reports that the invention particularly
described in the complete specification is not substantially the same
as that which is described in the provisional specification the
Comptroller may —
(a) refuse to accept the complete specification until it has
been amended to his satisfaction ; or
(b) (with the consent of the applicant) cancel the provisional
specification and direct that the application shall be
deemed to have been made on the date at which the
complete specification was left and proceed with tho
application accordingly :
Provided that where the complete specification includes an
invention not included in the provisional specification, the Comp-
troller may allow the original application to proceed so far as the
invention included both in the provisional and in the complete
specification is concerned, and allow an application for the additional
invention included in the complete specification to be made and
direct that the application shall be deemed to have been made on the
date at which the complete specification was left.
(4) An appeal shall lie from the decision of the Comptroller
under this section to the Appeal Tribunal, who shall, if required,
hear the applicant and the Comptroller and may make an order
determining whether and subject to what conditions (if any) the
complete specification shall be accepted.
[In India there are no separate provisional specifications and
complete specifications but only one class of specification. There
are no provisions corresponding to these sections in the Indian Act.]
7. Investigation of previous publications in United Kingdom
on applications for patents. — (1) Where an application fora patent
has been made and a complete specification has been left, the
examiner shall, in addition to the other inquiries which he is directed
M2
THE LAW OF PATENTS IN INDIA
to make by this Act, make a further investigation for the purpose
of ascertaining whether the invention claimed has been wholly or
in part claimed or described in any specification (other than a
provisional specification not followed by a complete specification)
published before the date which the patent applied for would bear
if granted and left pursuant to any application for a patent made
in the United Kingdom and dated within fifty years next before
such date.
(2) If on investigation it appears that the invention claimed
has been wholly or in part claimed or described in any such speci-
fication, the applicant shall be informed thereof, and the applicant
may, within such time as may be prescribed, amend his specification,
and the amended specification shall be investigated in like manner
as the original specification.
(3) If the Comptroller is satisfied that no objection exists to
the specification on the ground that the invention claimed thereby
has been wholly or in part claimed or described in a previous speci-
fication as before mentioned, he shall, in the absence of any other
lawful ground of objection, accept the specification,
(4) If the Comptroller is not so satisfied, he shall, unless the
objection is removed by amending the specification to the satis-
faction of the Comptroller, determine whether a reference to any,
and, if so, what prior specifications ought to be made in the speci-
fication by way of notice to the public :
Provided that the Comptroller, if satisfied that the invention
claimed ha& been wholly and specifically claimed or wholly and
specifically described in any specification to which the investigation
has extended, may, in lieu of requiring references to be made in
the applicant’s specification as aforesaid, refuse to grant a patent.
(5) If it is within the knowledge of the Comptroller that the
invention claimed has been made available to the public by publica-
tion in the United Kingdom, before the date which the patent
applied for would bear if granted, in any document (other than a
United Kingdom specification or a specification described in the
invention for the purposes of an application for protection made in
any country outside the United Kingdom more than fifty years next
before that date, or any abridgement of, or extract from, any such
specification published under the authority of the Comptroller or cf
APlPEtiDIX III 863
the Government of any country outside the United Kingdom), the
provisions of sub-sections (2), (3) and (4) of this section shall apply
in relation to a claim or description of the invention in that docu-
ment in like manner as those provisions apply in relation to a
description thereof in a prior specification to which the investigation
has extended.
(6) An appeal shall lie from the decision of the Comptroller
under this section to the Appeal Tribunal.
[Compare Sec. 5 of the Indian Act.]
8. Investigation of specifications published subsequently to
application. — (1) In addition to the investigation under the last
preceding section, the examiner shall make an investigation for the
purpose of ascertaining whether the invention claimed has been
wholly or in part claimed in any specification published on or after
the date which the patent applied for would bear if granted and
deposited pursuant to an application made in the United Kingdom
for a patent which if granted would bear prior date to the date
which the patent applied for would boar if granted.
(2) Where on such further investigation it appears that the
invention claimed has been wholly or in part claimed in any such
specification, the applicant shall, whether or not his specification has
been accepted or a patent granted to him, be afforded such facilities
as may be prescribed for amending his specification, and in the event
of his failing to do so the Comptroller shall, in accordance with such
procedure as may be prescribed, determine what reference, if any, to
other specifications ought to be made in his specification by way of
notice to the public.
(3) An appeal shnll lie from the decision of the Comptroller
under this section to the Appeal Tribunal.
(4) The investigations and reports required by this and the
last preceding section shall not be held in any way to guarantee the
validity of any patent and no liability shall be incurred by the
Board of Trade or any officer thereof by reason of or in connection
with any such investigation or report or any proceedings consequent
thereon.
[Compare Sec. 5 of the Indian Act.]
8A. Time for acceptance of complete specification. — Unless
THE LAW OF PATENTS IN INDIA
m
a complete specification ia accepted within eighteen months from the
date of an application the application shall become void unless-^
• (a) an appeal tinder any of the foregoing provisions of this
Act' has been lodged in respect of the application ; or
(b) in the oise of an application for a patent of addition
an appeal under any of the foregoing provisions of this
Act has been lodged in respect either of that application
or of the application for the original patent » or
(c) the time within which such an appeal as aforesaid may
be lodged has not expired :
: Provided that where an application is made for an extension
of time for the acceptance of a complete specification, the Comp*
trailer shall, on payment of the prescribed fee, grant an extension
of time to the extent applied for, but not exceeding three months.
9. Advertisement on acceptance of complete specification.— >
On the' acceptance of the complete specification the Comptroller
shall advertise the acceptance ; and the application and specifica-
tions, with the drawings samples and specimens (if any), shall be
op$n to- public inspection.
c [Sec. 6 of the Indian Act.]
10. Effect of acceptance of complete specification. — After
the acceptance of a complete specification and until the date of
sealing a patent in respect thereof, or the expiration of the time for
sealing, the applicant shall have the like privileges and rights as if
ii patent for the invention had been sealed on the date of the accep-
tance of the complete specification : Provided that an applicant
shall not be entitled to institute any proceeding for infringement
until the patent has betri sealed.
[Compare Sec. 7 of the Indian Act.]
11. Opposition to grant of patent. — (1) Any person may at
any time within two months from the date of the advertisement of
the acceptance of a complete specification or within such further
period, not exceeding one month, as the Comptroller may on an
application made to him within the said period of two months and
subject to payment of the prescribed fee, allow* give notice -at the
Patent Office of opposition to the grant of the patent on any of the
following .grounds =
APPENDIX III
865
(a) that the applicant obtained the invention or any part
thereof from him, or from a person of whom he is the
legal representative ; or
(b) that the invention has prior to the date which the patent
applied for would bear if granted been published in any
complete specification, or in any provisional specification
followed by a complete specification, deposited pursuant
to any application made in the United Kingdom and
dated within fifty years next before such date, or has
been made available to the public by publication in any
document (other than a United Kingdom specification
or a specification describing the invention for the
purpose of an application for protection made in any
country outside the United Kingdom more than fifty
years next before such date, or any abridgement of, or
extract from any such specification published under the
authority of the Comptroller or of the Government of
any country outside the United Kingdom) published in
the United Kingdom before such date ; or
(bb) that the invention has been claimed in any complete
specification for a United Kingdom patent which though
not published at the date which the patent applied for
would bear if granted was deposited pursuant to an
application for a patent which is or will be of prior date
to such patent ; or
(c) that the nature of the invention or the manner in which
it is to be performed is not sufficiently and fairly des-
cribed and ascertained in the complete specification ; or
(d) that the complete specification describes or claims an
invention other than that described in the provisional
specification, and that such other invention either forms
the subject of an application made by the opponent for a
patent which if granted would bear a date in the inter*
val between the date of the aijplication and the leaving
of the complete specification, or has been made available
to the public by publication in any document published
in the United Kingdom in that interval ; or
(e) that in the case of an application under section ninety-
109
866 THE LAW OP PATENTS IN INDIA
one of this Act the specification describes or claims an
invention other than that for which protection has been
applied for in a foreign state or any part of His
Majesty’s dominions outside the United Kingdom and
that such other invention either forms the subject of an
application made by the opponent for a patent which
if granted would bear a date in the interval between
the leaving of the application in the foreign state or
part of His Majesty’s dominions outside the United
Kingdom and the date of the application in the United
Kingdom, or has been made available to the public by
publication in any document published in the United
Kingdom in that interval,
but on no other ground.
[Compare Sec. 9(1) of the Indian Act.]
(2) Where such notice is given the Comptroller shall give
notice of the opposition to the applicant, and shall, after hearing the
applicant and the opponent, if desirous of being heard, decide on the
case.
[Sec. 9(2) of the Indian Act.]
(3) The decision of the Comptroller shall be subject to appeal
to the Appeal Tribunal who shall, if required, hear the applicant and
the opponent, if the opponent is, in the opinion of the Tribunal, a
person entitled to be heard in opposition to the grant of the patent
and shall decide the case.
[Compare Sec. 9(3) of the Indian Act.]
12. Grant and sealing of patent. — (1) If there is no opposi-
tion or, in case of opposition, if the determination is in favour of
the grant of a patent, a patent shall, on payment of the prescribed
fee, be granted to the applicant, or in the case of a joint application
to the applicants jointly, and the Comptroller shall cause the patent
to be sealed with the seal of the Patent Office.
Provided that—
(a) where an applicant under a joint application has died,
the patent may, with the consent of his personal re-
presentative, be granted to the survivors or survivor of
the joint applicants i
APPENDIX III
867
(b) whore an applicint has agreed in writing to assign tho
patent when granted or, in the case of joint application,
his interest in the patent when granted, the patent may,
upon proof of the agreement to the satisfaction of the
Comptroller, be granted to the assignee or, in the case of
an assignment by a joint applicant of his interest to an
assignee not being the other joint applicant, to the
assignee jointly with the other applicant or his assignee.
(2) Where disputes arise between joint applicants or their
assigns as to proceeding with an application, the Comptroller, if
satisfied that one or more of such persons ought to be allowed to
proceed alone, may allow him or them to proceed with the applica-
tion and may grant a patent to him or them, so, however, that all
parties interested shall be entitled to be heard before tho
Comptroller.
(3) An appeal shall lie from the decision of the Comptroller
under this section to the Appoal Tribunal.
(4) A patent shall be sealed as soon as may be, and not after
the expiration of twenty-one months from the date of application,
provided that —
(a) where the Comptroller has allowed an extension of the
time within which a complete specification may be left
or accepted, a further extension of four months after
the said twenty-one months shall be allowed for the
sealing of the patent :
(b) where the scaling of a patent is delayed by an appeal
to the Tribunal or by any proceedings taken for obtain-
ing the decision of the Comptroller under the provisions
of sub-section (2) of this section, or by opposition to tho
grant of the patent, that patent and any patent of addi-
tion the sealing whereof is delayed in consequence of
the delay in the sealing of that patent may be sealed at
such time as in the first-mentioned case the Tribunal, or
in either of the two last-mentioned cases the Comptroller,
may direct :
(c) where the patent is granted to the legal representative
of an applicant who has died before the expiration of
THE LAW OF PATEN fB IN INDIA
the time which would otherwise be allowed for sealing
the patent, the patent may be sealed at any time within
twelve months after the date of his death, or at such
later time as the Comptroller may think fit :
(d) where it is proved to the satisfaction of the Comptroller
that hardship would arise in connection with the prose-
cution by an applicant of an application for a patent in
any country outside the United Kingdom unless the
maximum period which would otherwise be allowed for
sealing the patent is extended, that period may be ex-
tended subject to payment of the prescribed fee to such
an extent as appears to the Comptroller to be necessary
in order to prevent that hardship arising :
(e) where for any reason a patent cannot be sealed within
the period allowed by this section, that period may, on
the payment of the prescribed fee and on compliance
with the prescribed conditions, be extended to such an
extent as may be prescribed.
[Compare Sec. 10 of the Indian Act.]
13. Date of payment. — Except as otherwise expressly pro-
vided by this Act, a patent shall be dated as of the date of the
application : Provided that no proceedings shall be taken in respect
of an infringement committed before the acceptance of the complete
specification.
[Compare Sec. 11 of the Indian Act.]
14. Effect, extent and form of Patent. — (1) A patent scaled
with the seal of the Patent Office shall have the same effect as if it
were sealed with the Great Seal of the United Kingdom, and shall
have effect throughout the United Kingdom and the Isle of Man :
Provided that a patentee may assign his patent for any place
in or part of the United Kingdom, or Isle of Man, as effectually as
if the patent were originally granted to extend to that place or part
only.
(2) Every patent may be in the prescribed form and shall be
granted for one invention only, but the specification may contain
more than one claim ; and it shall not be competent for any persoq
APPENDIX III
in an action or other proceeding to take any objection to a patent
on the ground that it has been granted for more than one invention.
[Compare Sec. 12 of the Indian Act.]
15. Fraudulent applications for patents.— (1) A patent
granted on the application of the true and first inventor shall not be
invalidated by an application in fraud of him, or by provisional
protection obtained thereon, or by any use or publication of the
invention subsequent to that fraudulent application during tho
period of provisional protection.
(2) Where a patent has been revoked by the court on the
ground that it has been obtained in fraud of the true and first in*
ventor, or where the grant has been refused by tho Comptroller
under the provisions of paragraph (a) of sub-section (1) of section
eleven of this Act, or revoked on tho same ground under the provi-
sions of section twenty-six of this Act, tho Comptroller may, on tho
application of the true inventor made in accordance with the provi-
sions of this Act, grant to him a patent for the whole or any part of
the invention in lieu of and bearing the same date as the patent so
revoked, or as would have been borne by the patent if the grant
thereof had not been refused.
(3) Where in proceedings before the Comptroller under this
Act for opposition to the grant of a patent or for revocation of a
patent, the Comptroller has found that an invention was in part
obtained from the opponent or the applicant for revocation and has
required that the specification be amended by exclusion of that part
of the invention, he may, on the application of the true inventor
made in accordance with the provisions of this Act, grant to him a
patent for that excluded part of the invention bearing the date of
the opposed application or the date of the patent sought to be
revoked as the case may be.
(4) No action shall be brought for any infringement of a
patent granted under the provisions of either of the last two fore-
going sub-sections committed before the dato of sealing the patent.
[Compare Sec. 13 of the Indian Act.]
16. Single patent for cognate inventions. — (1) Where the
same applicant has put in two or more provisional specifications for
Inventions which are cognate or modifications one of the Qther, and
870
THE LAW OF PATENTS IN INDIA
has obtained thereby concurrent provisional protection for the same,
and the Comptroller is of opinion that the whole of such inventions
are such as to constitute a single invention and may properly bo
included in one patent, he may accept one complete specification in
respect of the whole of such applications and grant a single patent
thereon.
(2) Such patent shall bear the date of the earliest of such
applications, but in considering the validity of the same, and in
determining other questions under this Act, the court or the Comp-
troller, as the case may be, shall have regard to the respective dates
of the provisional specifications relating to the several matters
claimed in the complete specification.
[There being no provisional specifications in India, there is no
corresponding provision in the Indian Act.]
Term of Patent.
17. Term of patent. — (1) The term limited in every patent
for the duration thereof shall, Bavc as otherwise expressly provided
by this Act, be sixteen years from its date.
(2) A patent shall, notwithstanding anything therein or in this
Act, cease if the patenteo fails to pay the prescribed fees within the
prescribed times ; provided that the Comptroller, upon the appli-
cation of the patentee, shall, on receipt of such additional fee, not
exceeding ten pounds, as may be prescribed, enlarge the time to
such an extent as may be applied for but not exceeding three
months.
(3) If any proceeding is taken in respect of an infringement
of the patent committed after a failure to pay any fee within the
prescribed time, and before any enlargement thereof, the court
before which the proceeding is proposed to be taken may, if it thinks
fit, refuse to award any damages in respect of such infringement.
[Compare Sec. 14 of the Indian Act.]
18. Extension of term of patent. — (1) A patentee may, after
advertising in manner provided by rules of the Supreme Court his
intention to do so, present a petition to the Court praying that his
patent may be extended for a further term, but such petition must
be presented at least six months before the time limited for the
expiration of the patent ;
APPENDIX III
871
Provided that the Court may allow such a petition to be pre-
sented at such time, not being later than the time limited for the
expiration of the patent, as the court may in its discretion think fit.
(2) Any person may give notice to the court of objection to
the extension.
(3) On the hearing of any petition under this section the
patentee and any person who has given such notice of objection
shall be made parties to the proceeding, and the Comptroller shall be
entitled to appear and be heard, and shall appear if so directed by
the court.
(4) The court, in considering its decision, shall have regard
to the nature and merits of the invention in relation to the public,
to the profits made by the patentee as such, and to all the circum-
stances of the case.
(5) Tf it appears to the court that the patentee has been inade-
quately remunerated by his patent, the court may by order extend
the term of the patent for a further term not exceeding five years,
or, in exceptional cases, ten years, or may order the grant of a new
patent for such term as may be specified in the order and containing
any restrictions, conditions, and provisions the court may think fit.
(6) Where, by reason of hostilities between His Majesty and
any foreign state, the patentee as such has suffered loss or damage
(including loss of opportunity of dealing in or developing his inven-
tion owing to his having been engagod in work of national import-
ance connected with such hostilities) an application under this
section may be made by originating summons instead of by petition,
and the court iu considering its decision may have regard solely to
the loss or damage so suffered by the patentee :
Provided that this sub-section shall not apply if the patentee
is a subject of such foreign state as aforesaid, or is a company the
business whereof is managed or controlled by such subjects or is
carried on wholly or mainly for the benefit or on behalf of such
subjects, notwithstanding that the company may be registered
within His Majesty’s dominions.
[Compare Sec. 15 of the Indian Act.]
19. Patents of addition. — (1) Where a patent for an invention
has been applied for or granted, and the applicant or the patentee.
872
THE LAW OP PATENTS IN INDIA
ns the case may be, applies for a farther patent in respect of any
improvement in or modification of the invention, he may, if he
thinks fit, in his application for the further patent, request that the
term limited in that patent for the duration thereof be the same as
that of the original patent or so much of that term as is unexpired.
(2) Where an application containing such a request is made, a
patent of addition may be granted for such term as aforesaid.
(3) Where an invention, being an improvement in or modifi-
cation of an original invention, is the subject of an independent
patent and the patentee in respect of the independent patent, being
also the patentee in respect of the patent for the original invention,
so requests, the Comptroller may make an order for the revocation
of the independent patent and a patent of addition may be granted
in respect of the improvement or modification bearing the same
date as the date of the independent patent so revoked.
(4) A patent of addition shall remain iu force during the term
limited in the patent for the original invention or until the previous
cesser thereof and no longer, but may be extended under the last
foregoing section for any period for which the patent for the ori-
ginal invention is extended thereunder, and in respect of a patent of
addition no fees shall be payable for renewal :
Provided that, if the patent for the original invention is
revoked, then the patent of addition shall, if the court or Comp-
troller so orders, become an independent patent, and the fees pay-
able, and the^dates when they become payable, shall be determined
by its date, but its duration shall not exceed the unexpired term of
the patent for the original invention.
(5) The grant of a patent of addition shall be conclusive
evidence that the invention is a proper subject for a patent of
addition, and the validity of the patent shall not be questioned on
the ground that the invention ought to have been the subject of an
independent patent.
[Compare Sec. 15A of the Indian Act.]
Restoration of lapsed Patents.
20. Restoration of lapsed patents.— (1) Where any patent has
become void owing to the failure of the patentee to pay any pres-
cribed fee within the prescribed time, the patentee may apply to the
APPENDIX III
873
Comptroller in the prescribed manner for an order for the restora-
tion of the patent.
(2) Every such application shall contain a statement of the
circumstances which have led to the omission of the payment of the
prescribed fee.
(3) Tf it appears from such statement that the omission was
unintentional and that no undue delay has occurred in the making
of the application, the Comptroller shall advertise the application
in the prescribed manner, and within such time as may be prescribed
any person may give notice of opposition at the Patent Office.
(4) Where such notice is given the Comptroller shall notify
the applicant thereof.
(5) After the expiration of the prescribed period the Comp-
troller shall hear the case and issue an order either restoring the
patent or dismissing the application :
Provided that the Comptroller may, if he think i fit, as a condi-
tion of issuing an order under this section restoring a patent require
that an entry shall be made in the register of patents in respect of
any document or instrument in respect of which the provisions
of this Act as to entries in the register have not been complied with.
(6) In every order under this section restoring a patent such
provision as may be prescribed shall be inserted for the protection
of persons who may have availed themselves of the subject-matter
of the patent after the patent had been announced as void in the
Official Journal (Patents).
(7) An appeal shall lie from the decision of the Comptroller
under this section to the Court.
[Compare Sec. 16 of the Indian Act.]
Amendment of Specification.
21. Amendment of specification by Comptroller. — (1) An
applicant at any time after acceptance of his complete specification or
a patentee at any time may, by request in writing left at the Patent
Office, seek leave to amend his specification, including drawings
forming part thereof, by way of disclaimer, correction, or explana-
tion, stating the nature of, and the reasons for, the proposed amend-
ment.
110
874
THE LAW OF PATENTS IN INDIA.
(2) The request and the nature of the proposed amendment
shall bo advertised in the prescribed manner, and at any time within
one month from its first advertisement any person may give notice
at the Patent Office of opposition to the amendment.
(3) Where such a notice is given the Comptroller shall give
notice of the opposition to the person making the request, and shall
hear and decide the case.
(4) Where no notice of opposition is given, or the person so
giving notice of opposition does not appear, the Comptroller shall
determine whether and subject to what conditions, if any, the amend-
ment ought to be allowed.
(5) The decision of the Comptroller in either case shall be
subject to an appeal, where the person making the request to amend
is a patentee, to the court, and, where the person making the request
to amend is an applicant fora patent, to the Appeal Tribunal and
the court or the Tribunal, as the case may be, shall, if required, hear
the person making the request to amend, and, where notice of opposi-
tion has been given the person giving that notice, if he is in the
opinion of the court or of the Tribunal, as the case may be, entitled
to be heard in opposition to the request, and, where there is no
opposition the Comptroller, and may make an order determining
whether and subject to what conditions (if any) the amendment ought
to be allowed.
(6) No amendment shall be allowed that would make the
specification, Its amended, claim an invention substantially larger
than or substantially different from the invention claimed by the
specification as it stood before amendment.
(7) Leave to amend shall be conclusive as to the right of the
party to make the amendment allowed, except in case of fraud ; and
the amendment shall be advertised in the prescribed manner,
and shall in all courts and for all purposes be deemed to form part
of the specification :
Provided that the court shall be entitled in construing a speci-
fication as amended to refer to the specification as accepted and
published.
(8) This section shall not apply when and so long as any
APPENDIX III
875
action for infringement or proceeding before the court for the
revocation of a patent is pending.
[Compare Sec. 17 of the Indian Act.]
22. Amendment of specification by the court. — In any action
for infringement of a patent or proceedings before a court for the
revocation of a patent the court may by order allow the patentee to
amend his specification by way of disclaimer, correction or explana-
tion in such manner, and subject to such terms as to costs, adver-
tisements or otherwise, as the court may think fit :
Provided that no amendment shall be so allowed that would
make the specification, as amended, claim an invention substantially
larger than, or substantially different from, the invention claimed by
the specification as it stood before the amendment, and where an ap-
plication for such an order is made to the court notice of the applica-
tion shall be given to the Comptroller, and the Comptroller shall have
the right to appear and be heard, and shall appear if so directed by
the court.
[Compare Sec. 18 of the Indian Act.]
23. Restriction on recovery of damages. — Where an amend-
ment of a specification by way of disclaimer, correction, or explana-
tion, has been allowed under this Act, no damages shall bo given in
any action in respect of the use of the invention before the date of
the decision allowing the amendment, unless the patentee establishes
to the satisfaction of the court that his original claim was framed in
good faith and with reasonable skill and knowledge.
[Compare Sec. 19 of the Indian Act.|
Compulsory Licences and Revocation.
24. Provisions as to patents indorsed “licences of right”. —
(1) At any time after the scaling of a patent tho Comptroller
shall, if the patentee so requests, cause the patent to be indorsed with
the words “licences of right”, and a corresponding entry to be made
in the register, and thereupon —
(a) any person shall at any time thereafter be entitled as of
right to a licence under the patent upon such terms as,
in default of agreement, may be settled by the Comptrol-
ler on the application of cither the patentee or tho
applicant :
87V
THE LAW OP PATENTS IN INDIA
Provided that any licence the terms of which are
settled by agreement shall be deemed, unless otherwise
expressly provided, to include the terms and conditions
specified in paragraphs (c) and (d) of this sub*section as
if they had been imposed by the Comptroller thereunder
in like manner as if the terms had been settled by the
Comptroller :
(b) in settling the terms of any such licence the Comptroller
shall be guided by the following considerations —
(i) he shall, on the one hand, endeavour to secure the
widest possible user of the invention in the
United Kingdom consistent with the patentee
deriving a reasonable advantage from bis patent
rights ;
(ii) he shall, on the other hand, endeavour to secure
to the patentee the maximum advantage consis-
tent with the invention being worked by the
licensee at a reasonable profit in the United
Kingdom ;
(iii) he shall also endeavour to secure equality of
advantage among the several licensees, and for
this purpose may, on due cause being shown,
reduce the royalties or other payments accruing
v to the patentee under any licence previously
granted :
Provided that, in considering the question of equality
of advantage, the Comptroller shall take into account
any work done or outlay incurred by any previous
licensee with a view to testing the commercial value of
the invention or to securing the working thereof on a
commercial scale in the United Kingdom :
(o) any such licence the terms of which are settled by the
Comptroller may be so framed as to preclude the licensee
from importing-into the United Kingdom any goods the
importation of which, if made by persons other than the
patentee or those claiming under him, would be an
infringement of the patent, and in such a case the
APPENDIX III
877
patentee and all licensees under the patent shall be
deemed to have mutually covenanted against such
importation :
(d) every such licensee shall be entitled to call upon a
patentee to take proceedings to prevent the infringement
of the patent, and if the patentee refuses, or neglects to
do so within two months after being so called upon, the
licensee may institute proceedings for the infringement
in his own name as though he were patentee, making the
patentee a defendant. A patentee so added as defendant
shall not be liable for any costs unless he enters an
appearance and takes part in the proceedings. Servico
on him may be effected by leaving the writ at his address
for service given on the register :
(c) If in any action for infringement of a patent so indorsed
the infringing defendant is ready and willing to take a
licence upon terms to be settled by the Comptroller, no
injunction against him shall bo awarded, and the amount
recoverable against him by way of damages (if any) shall
not exceed double the amount which would have been
recoverable against him as licensee if the licence had
been dated prior to the earliest infringement :
Provided that this paragraph shall not apply where
the infringement consists of the importation of infring-
ing goods :
(f) the renewal fees payable by the patentee of a patent so
indorsed shall, as from the date of the indorsement, bo
one moiety only of the fees which would otherwise have
been payable.
(2) The Comptroller shall, before acting on any request to
indorse a patent made by the patentee under this section, advertise
such request in the Official Journal (Patents), and shall satisfy himself
that the patentee is not precluded by contract from making such
request, and for that purpose shall require from the patentee such
evidence, by statutory declaration or otherwise, as he may deem
necessary :
Provided that a patentee shall not be deemed to be so preclq-
878
THE LAW OF PATENTS IN INDIA
(led by reason only of his having granted a licence under the patent
where the licence docs not limit his right to grant other licences.
(3) Any person, alleging that a request under this section has
been made contrary to some contract in which he is interested, may
apply to the Comptroller within the prescribed time and in the pres-
cribed manner, and the Comptroller, if satisfied of the truth of such
allegation, shall refuse to indorse the patent pursuant to the request
or shall cause the indorsement, if already made, to be cancelled.
(4) Where a patent of addition is in force any request made
under this section for an indorsement either of the original patent
or of the patent of addition shall be treated as a request for the
indorsement of both patents, and if refused as respects the one shall
be refused as respects the other also, and where a patent of addition
is granted in respect of a patent which is indorsed under this section
the patent of addition shall also be so indorsed.
(5) All indorsements of patents under this section shall be
entered on the register of patents and shall be published in the
Official Journal (Patents), and in such other manner as to the Comp-
troller may seem desirable for the purpose of bringing the invention
to the notice of manufacturers.
(6) The Comptroller may, if he thinks fit, on the application of
the patentee and on payment by him of the unpaid moiety of all
renewal foes which have become due since the indorsement, cancel
the indorsement, and in that case the patentee's rights and liabilities
shall be the same as if no such indorsement had been made :
Provided that before acting on any application for the
cancellation of an indorsement, the Comptroller shall advertise the
application in the prescribed manner and shall satisfy himself that
there is no existing licence or that all existing licensees consent to
the application.
(7) Any person may within the prescribed time and in the
prescribed manner, give notice at the Patent Office of opposition to
an application for the cancellation of an indorsement, and where any
such notice is given the Comptroller shall, after giving notice of the
opposition to the applicant and after giving to the applicant and
to the opponent an opportunity of being heard, decide on the
case,
APPENDIX III
879
(8) Any decision of the Comptroller under this section shall
be subject to an appeal to the Court.
[There are no provisions under the Indian Act for the endorse-
ment of a Patent for “licenses of right.” See page 305 above.]
25. Revocation of Patent. — (1) Revocation of a patent may
be obtained on petition to the court.
(2) A patent may be revoked upon any of the following
grounds : —
(a) that the invention was the subject of a valid prior
grant ;
(b) that the true and first inventor was not the applicant
or one of the applicants for the patent ;
(c) that the patent was obtained in fraud of rights of the
person applying for the order or of any person under or
through whom lie claims 5
(d) that the invention is not a manner of new manufacture
the subject of letters [latent and grant of privilege with-
in section six of the Statute of Monopolies ;
(e) subject as in this sub-section provided, that the inven-
tion is not new ;
(f) that the invention is obvious and does not involve any
inventive step having regard to what was known or
used prior to the date of the patent ;
(g) that the invention is not useful ;
(h) that the complete specification does not sufficiently and
fairly describe and ascertain the nature of the invention
and the manner in which the invention is to be per-
formed ;
(i) that the complete specification does not sufficiently and
clearly ascertain the scope of the monopoly claimed ;
(j) that the complete specification does not disclose the best
method of performance of the invention known to the
applicant for the patent at the time when the speci-
fication was left at the Patent Office ;
(k) that the patent was obtained ou a false suggestion or
representation ;
880
THE LAW OF PATENTS IN INDIA
(l) (hat the invention claimed in the complete specification
is not the same as that contained in the provisional
specification, and that the invention claimed, so far as it
is not contained in the provisional specification was not
new at the date when the complete specification was
filed, or the true and first inventor was not the appli-
cant, or one of the applicants, for the patent, or, in
the case of an application made under section
ninety-one of this Act, that the invention claimed in
the complete specification is not the same as that for
which protection has been applied for in the foreign
state or part of His Majesty’s dominions outside the
United Kingdom ;
(m) that the primary or intended use or exercise of the
invention is contrary to law ;
(n) that the patentee has contravened or has not complied
with the conditions contained in the patent ;
(o) that prior to the date of the patent the invention was
secretly worked on a commercial scale and not merely
by way of reasonable trial or experiment in the United
Kingdom by the patentee or others, not being a Govern-
ment department or the agents or contractors of, or
other person authorised in that behalf by, a Govern-
ment department ;
(p) v that in the case of inventions relating to substances
prepared or produced by chemical processes or intended
for food or medicine the specification includes claims
which under section thirty-eight A of this Act cannot
lawfully be made ; or
upon any other ground upon which a patent might, immediately
before the first day of January one thousand eight hundred and
eighty-four, have been repealed by scire facias :
Provided that this sub-section shall have effect, as respects
the ground of revocation specified in paragraph (e) thereof, subject
to the provisions of sub-section (1) of section fifteen, sub-section (12)
of section thirty, section forty-one and section forty-five of this
Act.
[Compare and contrast Sec. 26 of the Indian Act.]
APPENDIX III
881
(3) Every ground on which a patent may be revoked shall be
available as a ground of defence in an action for infringement of a
patent.
[Sec. 29(2) of the Indian Act.]
(4) A petition for revocation of a patent may be presentod —
(a) by the Attorney-General or. any person authorised by
him ; or
(b) by any person alleging —
(i) that the patent was obtained in fraud of his
rights, or of the rights of any person under or
through whom he claims ; or
(ii) that he, or any person under or through whom
he claims, was the true inventor of any inven-
tion included in the claim of tho patentee ; or
(iii) that he, or any person under or through whom ho
claims an interest in any trade, business, or manu-
facturc, had publicly manufactured, used, or sold,
within this realm, before the date of the patent,
anything claimed by the patentee as his inven-
tion.
[Sec. 26(2) of the Indian Act.]
26. Power of Comptroller to revoke patents. — (1) Any per-
son who would have been entitled to oppose the grant of a patent
or is the successor in interest of a person who was so entitled may
within twelve months from the date of sealing the patent apply
to the Comptroller for an order revoking tho intent on any one or
more of the grounds on which the grant of a patent might have been
opposed :
Provided that when an action for infringement or proceedings
for the revocation of the patent are pendiug in any court, an appli-
cation under this section shall not be made except with the leave of
he court.
(2) The Comptroller shall give notice of the application to the
patentee, and after hearing the parties, if desirous of being heard)
may make an order revoking the patent or requiring the specification
relating thereto to be amended by disclaimer, correction, or expla-
in
882
THE LAW OF PATENTS IN INDIA
nation, or dismissing the application ; but the Comptroller shall not
make an order revoking the patent unless the circumstances are such
us would have justified him in refusing to grant the patent had the
proceedings been proceedings in an opposition to the grant of a
patent.
[The provisions for “belated oppositions” here referred to have
no counterpart in the Indian Act. See page 432 above.]
(3) A patentee may at any time, by giving notice in the pres-
cribed manner to the Comptroller, offer to surrender his patent, and
the Comptroller may, if after giving notice of the offer and hearing
all parties who desire to be heard he thinks fit, accept the offer, and
thereupon make an order for the revocation of the patent.
[Sec. 24 of the Indian Act.]
(4) Any decision of the Comptroller under this section shall
be subject to appeal to the Court.
27. Provisions for the prevention of abuse of monopoly
rights. — (1) Any person interested may at any time after the ex-
piration of three years from the date of scaling a patent apply to
the Comptroller alleging in tho case of that patent that there has
been an abuse of the monopoly rights thereunder and asking for
relief under this section.
(2) The monopoly rights under a patent shall be deemed to
have been abused in any of the following circumstances : —
(a) If the patented invention (being one callable of being
worked in the United Kingdom), is not being worked
within the United Kingdom on a commercial scale, and
no satisfactory reason can be given for such
non-working :
Provided that, if an application is presented to the Comp-
troller on this ground, and the Comptroller is of opinion
that the time which has elapsed since the sealing of the
patent has by reason of the nature of the invention or
for any other cause been insufficient to enable the inven-
tion to be worked within the United Kingdom on a
commercial scale, the Comptroller may make an order
adjourning the application for such period as will in
. his opinion be sufficient for that purpose.
APPENDIX III
(b) If the working of the invention within the United King-
dom on a commercial scale is being prevented oi
hindered by the importation from abroad of the patented
article by the patentee or persons claiming under him,*
or by persons directly or indirectly purchasing from
him, or by other persons against whom the patentee is
not taking or has not taken any proceedings for
infringement :
(c) If the demand for the patented article in the United
Kingdom is not being met to an adequate extent and on
reasonable torms :
(d) If, by reason of the refusal of the patentee to grant a
licence or licences upon reasonable terms, the trade or
industry of the United Kingdom or the trade of any
person or class of persons trading in the United King-
dom, or the establishment of any new trade or industry
in the United Kingdom, is prejudiced, and it is in the
public interest that a licence or licences should be
granted :
(e) If any trade or industry in the United Kingdom, or any
person or class of persons engaged therein, is unfairly
prejudiced by the conditions attached to the patentee,
whether before or after the passing of this Act, to the
purchase, hire, licence, or use of the patented article,
or to the using or working of the patented process :
(f) If it is shown that the existence of the patent, being a
patent for an invention relating to a process involving
the use of materials not protected by the patent or for
an invention rotating to a substance produced by such
a process, has been utilised by the patentee so as un-
fairly to prejudice in the United Kingdom the manu-
facture, use or sale of any such materials :
Provided that, for the purpose of determining whether there
has been any abuse of the monopoly rights under a patent, it shall
be taken that patents for new inventions are granted not only to
encourage invention but to secure that new inventions shall so far
as possible be worked on a commercial scale in the United Kingdom
without undue delay.
884 THE LAW OF PATENTS IN INDIA
(3) On being satisfied that a ease of abuse of the monopoly
rights under a patent has been established, the Comptroller may
exercise any of the following powers as he may deem expedient in
the circumstances : —
(a) He may order the patent to be indorsed with the words
“licences of right” and thereupon the same rules shall
apply as are provided in this Act in respect of patents
so indorsed, and an exercise by the Comptroller of this
power shall entitle every existing licensee to apply to
the Comptroller for an order entitling him to surrender
his licence in exchange for a licence to be settled by the
Comptroller in like manner as if the patent had been
so indorsed at the request of the patentee, and the
Comptroller may make such order ; and an order that
a patent be so indorsed may be made notwithstanding
that there may be an agreement subsisting which would
have precluded the indorsement of the patent at the
request of the patentee :
(b) He may order the grant to the applicant of a licence on
such terms as the Comptroller may think expedient, in-
cluding a term precluding the licensee from importing
into the United Kingdom any goods the importation of
which, if made by persons other than the patentee or
persons claiming under him, would be an infringement
of the patent, and in such case the patentee and all
licensees for the time being shall be deemed to have
mutually covenanted against such importation. A
licensee under this paragraph shall be entitled to call
upon the patentee to take proceedings to prevent in-
fringement of the patent, and if the patentee refuses, or
neglects to do so within two months after being so
called upon, the licensee may institute proceedings for
infringement in his own name as though he were the
patentee, making the patentee a defendant. A patentee
so added as defendant shall not be liable for any 'costs
unless he enters an appearance and takes part in the
proceedings. Service on him may be effected by
leaving the writ at his address for service given on tbe
register ;
APPENDIX III
885
In settling the terms of a licence under this paragraph the
Comptroller shall be guided as far as may be by the
same considerations as are specified in section twenty-
four of this Act for his guidance in settling licences
under that section :
(c) If the Comptroller is satisfied that the invention is not
being worked on a commercial scale within the United
Kingdom, and is such that it cannot be so worked
without the expenditure of capital for tho raising of
which it will be necessary to rely on the patent mono-
poly, he may, unless the patentee or those claiming
under him will undertake to find such capita), order the
grant to the applicant, or any other person or to tho
applicant and any other person or persons jointly, if able
and willing to provide such capital, of an exclusive
licence on such terms as the Comptroller may think
just, but subject as hereinafter provided :
(d) If the Comptroller is satisfied that the monopoly rights
have been abused in the circumstances specified in
paragraph (f) of tho last foregoing sub-section, he may
order the grant of licences to the applicant and to such
of his customers and containing such terms as the
Comptroller may think expedient :
(e) If the Comptroller is satisfied that the objects of this
section cannot be attained by the exercise of any of the
foregoing powers, he may order the patent to be
revoked, either forthwith or after such reasonable inter-
val as may be specified in the order, unless in the
meantime such conditions as may be prescribed in the
order with a view to attaining the objects of this section
are fulfilled, and the Comptroller may, on reasonable
cause shown in any case, by subsequent order extend
the interval so specified :
Provided that the Comptroller shall make no order for revo-
cation which is at variance with any treaty, convention,
arrangement, or engagement with any foreign country
or part of his Majesty’s dominions outside the United
kingdom ;
THE LAW OF PATENTS IN INDIA
(f) If the Comptroller is of opinion that the objects of this
section will be best attained by making no order under
the above provisions of this section, he may make an
order refusing the application and dispose of any ques-
tion as to costs thereon as he thinks just.
(4) In settling the terms of any such exclusive licence as is
provided in paragraph (c) of the last preceding sub-section, due
regard shall be had to the risks undertaken by the licensee in provi-
ding the capital and working the invention, but, subject thereto, the
licence shall be so framed as —
(a) to secure to the patentee the maximum royalty compa-
tible with the licensee working the invention within the
United Kingdom on a commercial scale and at a reason-
able profit ;
(b) to guarantee to the patentee a minimum yearly sum by
way of royalty, if and so far as it is reasonable so to do,
having regard to the capital requisite for the proper
working of the invention and all the circumstances of
the case ;
and, in addition to any other powers expressed in the licence or
order, the licence and the order granting the licence shall bo
made revocable at the discretion of the Comptroller if the licensee
fails to expend the amount specified in the licence as being the
amount which he is able and willing to provide for the purpose of
working the invention on a commercial scale within the United
Kingdom, or if lie fails so to work the invention within the time
specified in the order.
(5) In deciding to whom such an exclusive licence is to be
granted the Comptroller shall, unless good reason is shown to the
contrary, prefer an existing licensee to a person having no regis-
tered interest in the patent.
(6) The order granting an exclusive licence under this section
shall operate to take away from the patentee any right which he
may have as patentee to work or use the invention and to revoke
all existing licences, unless otherwise provided in the order, but on
granting an exclusive licence the Comptroller may, if he thinks it
fair and equitable, make it a condition that the licensee shall give
APPENDIX III
887
proper compensation to be fixed by the Comptroller for any money
or labour expended by the patentee or any existing licensee in
developing or exploiting the invention.
(7) Every application presented to the Comptroller under
this section must set out fully the nature of the applicant’s interest
and the facts upon which the applicant bases his case and the relief
which he seeks. The application must be accompanied by statutory
declarations verifying the applicant’s interest and the facts set out
in the application.
(8) The Comptroller shall consider the matters alleged in tho
application and declarations, and, if satisfied that the applicant has
a bona fide interest and that a prima facie case for relief has been
made out, he shall direct the applicant to serve copies of the appli-
cation and declarations upon the patentee and upon any other
persons appearing from the register to be interested in the patent
and shall advertise the application in the Official Journal (Patents).
(9) If the patentee or any person is desirous of opposing the
granting of any relief under this section, he shall, within such timo
as may be prescribed or within such extended time as the Comptroller
may on application further allow, deliver to the Comptroller a coun-
ter statement verified by a statutory declaration fully setting out the
grounds on which the application is to be opposed.
(10) The Comptroller shall consider the counter statement and
declarations in support thereof and may thereupon dismiss the appli-
cation if satisfied that the allegations in the application have been
adequately answered, unless any of the parties demands a hearing or
unless the Comptroller himself appoints a hearing. In any case the
Comptroller may require tho attendance before him of any of tho
declarants to be cross-examined or further examined upon matters
relevant to the issues raised in the application and counter state-
ment, and he may, subject to due precautions against disclosure of
information to rivals in trade, require the production before him of
books and documents relating to the matter in issue.
(11) All orders of the Comptroller under this section shall be
subject to appeal to the court, and on any such appeal the Attorney-
General or such other counsel as he may appoint shall be entitled to
appeal and be heard.
THE LAW OF PATENTS IN INDIA
(12) In any case where the Comptroller does not dismiss an
application as hereinbefore provided, and
(a) if the parties interested consent ; or
(b) if the proceedings require any prolonged examination
of documents or any scientific or local investigation
which cannot in the opinion of the Comptroller con-
veniently be made before him ;
the Comptroller may at any time order the whole proceedings or any
question or issue of fact arising thereunder to be referred to an
arbitrator agreed on by the parties, or in default of agreement
appointed by the Comptroller, and, where the whole proceedings are
so referred, the award of such arbitrator shall, if all the parties con-
sent, be final, but otherwise shall be subject to the same appeal as
the decision of the Comptroller under this section, and where a ques-
tion or issue of fact is so referred, the arbitrator shall report his
findings to the Comptroller.
(13) For the purpose of this section, the expression “patented
article” includes articles made by a patented process.
[Compare Secs. 22 & 23 of the Indian Act : and Chapter VIII
at p. 268 et seq above.]
Register of patents.
28. Register of patents. — (1) There shall be kept at the
Patent Office a book called the register of patents, wherein shall be
entered the names and addresses of grantees of patents, notifications
of assignments and of transmissions of patents, of licenoes under
patents, and of amendments, extensions, and revocations of patents,
and such other matters affecting the validity or proprietorship of
patents as may be prescribed.
(2) The register of patents existing at the commencement of
this Act shall be incorporated with and form part of the register of
patents under this Act.
(3) The register of patents shall be prima facie evidence of
any matters by this Act directed or authorised to be inserted therein.
(4) Copies of deeds, licences, and any other documents affect-
ing the proprietorship in any letters patent, or in any licence there-
under, must be supplied to the Comptroller in the prescribed manner
for filing in the Patent Office.
[Sec. 20 of the Indian Act.]
APPENDIX III 88d
Crown
29. Right of Crown to use patented inventions. — (1) A
patent shall have to all intents the like effect as against His Majesty
the King as it has against a subject :
Provided that any Government department may, by themselves
or by such of their agents, contractors, or others as may be autho-
rised in writing by them at any time after the application, make,
use or exercise the invention for the services of the Crown on such
terms as may, either before or after the use thereof, bo agreed on,
with the approval of the Treasury, between the department and
the patentee, or, in default of agreement, as may be settled in
the manner hereinafter provided. And the terms of any agree-
ment or licence concluded between the inventor or patentee and
any person other than a Government department, shall be inopera-
tive so far as concerns the making, use or exercise of the invention
for the services of the Crown :
Provided further that, where an invention which is the subject
of any patent has, before the date of the patent, been duly recorded in
a document by, or tried by or on behalf of, any Government depart-
ment (such invention not having been communicated directly or
indirectly by the applicant for the patent or the patentee), any
Government department, or such of their agents, contractors, or
others as may be authorised in wiriting by them, may make, use and
exercise the invention, so recorded or tried for the service of the
Crown, free of any royalty or other payment to the patentee; not-
withstanding the existence of the patent. If in the opinion of the
department the disclosure to the applicant or the patentee, as the
case may bo, of the document recording the invention, or the
evidence of the trial thereof, if required, would be detrimental to the
public interest, it may be made confidentially to counsel on behalf of
the applicant or patentee, or to any independent expert mutually
agreed upon.
(2) In case of any dispute as to the making, use or exercise of
an invention under this section, or the terms therefor, or as to the
existence or scope of any record or trial as aforesaid, the matter
shall be referred to the court for decision, who shall have power to
refer the whole matter or any question or issue of fact arising there-
on to be tried before a special or official referee or an arbitrator
112
990 THE LAW OF PATENTS IN INDIA
upon such terms as it may direct. The Court, referee, or arbitrator,
as the case may be, may, with the consent of the parties, take into
consideration the validity of the patent for the purposes only of the
reference and for the determination of the issues between the appli-
cant and such Government department. The court, referee, or
arbitrator, further in settling the terms as aforesaid, shall be
entitled to take into consideration any benefit or compensation
which the patentee, or any other person interested in the patent,
may have received directly or indirectly from the Crown or from
any Government department iu respect of such patent.
(11) The right to use an invention for the services of the Crown
under the provisions of this section or any provisions for which this
section is substituted shall include, and shall be deemed always to
have included, the power to sell any articles made in pursuance of
such right which are no longer required for the services of the
Crown.
(4) Nothing in this section shall affect the right of the Crown
or of any person deriving title directly or indirectly from the Crown
to sell or use any articles forfeited under the laws relating to the
customs or excise.
[Compare Sec. 21 of the Indian Act.]
30. Assignment to Secretary for War or Secretary for Air
or the Admiralty of certain inventions. — (1) The inventor of any
improvement in instruments or munitions of war may (either for or
without valuable consideration) assign to the Secretary of State for
War or Secretary of State for Air or the Admiralty on behalf of His
Majesty all the benefit of the invention and of any patent obtained
or to be obtained for the invention ; and the Secretary of State or
the Admiralty may be a party to the assignment.
(2) The assignment shall effectually vest the benefit of the
invention and patent in the Secretary of State or the Admiralty on
behalf of His Majesty, and all covenants and agreements therein con-
tained for keeping the invention secret and otherwise shall be valid
and effectual (notwithstanding any want of valuable consideration),
and may be enforced accordingly by the Secretary of State or the
Admiralty.
(3) Where any Buch assignment has been made, the Secretary
APPENDIX III
891
of State or the Admiralty may at any time before the publication of
the complete specification certify to the Comptroller that, in the
interest of the public service, the particulars of the invention and of
the manner in which it is to be performed should be kept secret.
(4) If the Secretary of State or the Admiralty so certify, the
application and specifications, with the drawings (if any), and any
amendment of the complete specification, and any copies of such
documents and drawings shall, instead of being left in the ordinary
manner at the Patent Office, he delivered to the Comptroller in a
packet sealed by authority of the Secretary of State or the Admiralty.
(5) The packet shall, until the expiration of the term during
which a patent for the invention may be in force, be kept sealed by
the Comptroller, and shall not be opened save under the authority
of an order of the Secretary of State or the Admiralty.
(6) The scaled packet shall be delivered at any time during
the continuance of the patent to liny person authorised by the
Secretary of State or the Admiralty to receive it, and shall if retur-
ned to the Comptroller be again kept sealed by him.
(7) On the expiration of the term of the patent, the sealed
packet shall be delivered to the Secretary of State or the Admiralty.
(8) Where the Secretary of State or the Admiralty certify as
aforesaid, after an application for a patent has been left at the
Patent Office, but before the publication of the complete specification,
the application and specifications, with the drawings (if any), shall be
forthwith placed in a packet scaled by authority of the Comptroller,
and the packet shall be subject to the foregoing provisions respect-
ing a packet sealed by authority of the Secretary of State or the
Admiralty.
(9) No proceeding by petition or otherwise shall lie for revo-
cation of a patent granted for an invention in relation to whioh a
certificate has been given by the Secretary of State or the Admiralty
as aforesaid.
(10) No copy of any specification or other document or
drawing, by this section required to be placed in a scaled packet,
shall in any manner whatever be published or open to the inspection
of the public, but, save as in this section otherwise directed, the
provisions of this Act shall apply in respect of any such invention
and patent as aforesaid.
THE LAW OF PATENTS IN INDIA
(11) The Secretary of State or the Admiralty may at any time
waive the benefit of this section with respect to any particular inven-
tion, and the specifications, documents, and drawings shall be thence-
forth kept and dealt with in the ordinary way.
(12) The communication of any invention for any improvement
in instruments or munitions of war to the Seoretary of State or the
Admiralty or to any person or persons authorised by the Secretary
of State or the Admiralty to investigate the same or the merits
thereof, shall not, nor shall anything done for the purposes of the
investigation, be deemed use or publication of such invention so as
to prejudice the grant or validity of any patent for the same.
(13) Rules may be made under this Act, after consultation
with the Secretary of State and the Admiralty, for the purpose of
ensuring secrecy with respect to patents to which this section
applies, and those rules may modify any of the provisions of this Act
in their application to such patents as aforesaid so far as may appear
necessary for the purpose aforesaid.
[Compare Sec. 21 A of the Indian Act.]
Legal Proceedings
31'. Hearing with assessor. — (1) In an action or proceeding
for infringement or revocation of a patent, the court may, if it think
fit, and shall on the request of all of the parties to the proceeding,
call in the aid of an assessor specially qualified, and try the case
wholly or partially with his assistance ; the action shall be tried
without a jury unless the court otherwise directs.
(2) The Court of Appeal may, if they think fit, in any proceed-
ing before them call in the aid of an assessor as aforesaid.
(3) The remuneration, if any, to be paid to an assessor under
this section shall be determined by the court or the Court of Appeal,
as the case may be, and be paid as part of the expenses of the
execution of this Act.
[Sec. 35 of the Indian Act.]
32. Power to counterclaim lor revocation in an action for
infringement. — A defendant in an action for infringement of a
patent may, without presenting a petition, apply in acoordance with
the rules of the Supreme Court by way of counterclaim in the aqtioq
for the revocation of the patent,
APPENDIX III
893
[There is no provision corresponding to this section in the
Indian Act. See pp. 454 and 733 above.]
32A. Power of court in infringement aetion as regards relief
in respeet of particular claims. — Where the court in any action for
infringement of a patent finds that any claim in the specification, in
respect of which infringement is alleged, is valid, but that any other
claim therein is invalid, then, notwithstanding anything in section
twentythree of this Act : —
(a) if the patentee furnishes proof to the satisfaction of the
court that the invalid claim was framed in good faith
and with reasonable skill and knowledge, or if the
patent is dated before the commencement of the Patents
and Designs Act, 1932, the court shall, subject to its
discretion as to costs and as to the date from which
damages should be reckoned, and to such terms as to
amendment of the specification as it may deem desirable,
grant relief in respect of nny valid claim which is
infringed without regard to the invalidity of any other
claim in the specification and in exercising such discre-
tion the court may take into consideration the conduct
of the parties in inserting the invalid claim in the speci-
fication or permitting that claim to remain there ;
(b) if the patentee docs not furnish proof as aforesaid, and
the patent is dated after the commencement of the
Patents and Designs Act, 1932, the court shall not grant
any relief by way of damages or costs, but may grant
such other relief in respect of any valid claim which is
infringed as to the court seems just, and may impose
each terms as to amendment of the specification as a
condition of granting any such relief as it may deem
desirable ;
(c) if a counterclaim for revocation of the patent has been
made in the action on the ground of the invalidity of
any claim in the specification, the court may postpone
the operation of any order made thereon daring such
time as may be requisite for enabling the patentee to
effect any amendment of the specification pursuant to
terras imposed upon hjra and may attach any such other
894
THE LAW OF PATENTS IN INDIA
condition to any order to be made on the counterclaim
as the court may deem desirable.
[Compare Sec. 35A of the Indian Act.]
33. Exemption of innocent infringer from liability for
damages. — A patentee shall not be entitled to recover any damages
in respect of any infringement of a patent granted after the com-
mencement of this Act from any defendant who proves that at the
date of the infringement he was not aware, nor had reasonable
means of making himself aware, of the existence of the patent, and
the marking of an article with the word "patent”, “patented”, or any
word or words expressing or implying that a patent has been
obtained for the article, stamped, engraved, impressed on, or
otherwise applied to the article, shall not be deemed to constitute
notice of the existence of the patent unless the word or words
are accompanied by the number of the patent :
Provided that nothing in this section shall affect any proceed-
ings for an injunction.
[Sec. 30 of the Indian Act.]
34. Order for Inspection etc. in action. — In an action for in-
fringement of a patent, the plaintiff shall be entitlod to relief by
way of injunction and damages but not to an account of profits, but
subject as aforesaid the court may on the application of cither party
make such order for an injunction or inspection, and impose such
terms and give such directions respecting the same and the proceed-
ings thereon as the court may see fit.
[Compare and contrast Sec. 31 of the Indian Act. And see
p. 776 above.]
35. Certificate of validity questioned and costs thereon. —
In an action for infringement of a patent, the court may certify that
the validity of any claim in the specification of the patent came in
question ; and if the court so certifies, then in any subsequent action
for infringement of such claim the plaintiff in that action on obtain-
ing a final order or judgment in his favour shall, unless the court
trying the action otherwise directs, have his full costs, charges, and
expenses as between solicitor and client so far as that claim is
concerned.
[Compare Sec. 32 of the Indian Act.]
APPENDIX III
895
36. Remedy in ease of groundless threats of legal proceed-
ings. — (1) Where any person, by circulars, advertisements, or other-
wise, threatens any person with an action for infringement of patent
or other like proceedings, then, whether the person making the
threats is or is not entitled to or interested in a patent or an appli-
cation for a patent, any person aggrieved thereby may bring an
action against him, and may obtain a declaration to the effect that
such threats are unjustifiable and nn injunction against the conti-
nuance of such threats and may recover such damage, if any, as he
has sustained thereby, unless the person making the thrents proves
that the acts in respect of which the proceedings arc threatened
constitute or, if done, would constitute an infringement of a patent
in respect of a claim in the specification which is not shown by the
plaintiff to be invalid or an infringement of rights arising from the
acceptance of a complete specification in respect of a claim therein
which is not shown by the plaintiff to be capable of being success-
fully opposed.
[Comi>arc Sec. 36 of the Indian Act.]
(2) The defendant in any such action as aforesaid may apply,
by way of a counterclaim in the action, for any relief to which he
would be entitled in a separate action in respect of any infringement
by the plaintiff' of the patent to which the threats relate.
Miscellanous
37. Joint ownership of a patent. — (1) Where, after the
commencement of this Act, a patent is granted to two or more
persons jointly, they shall, unless otherwise specified in the patent,
be treated for the purpose of the devolution of the legal interests
therein as joint tenants, but, subject to any contract to the contrary,
each of such persons shall be entitled to use the invention for his
own profit without accounting to the others, but shall not be entitled
to grant a licence otherwise than with their consent or in accordance
with directions given under this section, and if any such person dies,
his beneficial interest in the patent shall devolve on his personal
representatives as part of his personal estate.
(2) The Comptroller may, upon application for relief under
thia sub-section being made to him in the prescribed manner by any
:one or more of joint patentees, and after giviug to the other joint
THE LAW OF PATENTS IN INDIA
patentees an opportunity of being heard, give such directions in
accordance with the application as to the sale or lease of the patent
for the invention, or as to the grant of licences in respeot thereof,
or otherwise, as to the use and development of the rights there-
under as appear to him to be just and expedient, and it shall be the
duty of all the joint patentees to give effect to any directions
so given.
(3) If any person who is under obligation to give effect to
any snoh directions as aforesaid fails to execute any instrument or
to do any act or thing requisite for giving effect thereto within
fourteen days after being requested in writing so to do by any of
the joint patentees, the Comptroller may, by direction given under
the last foregoing sub-section, empower any person to execute that
instrument or to do that act or thing in the name and on behalf of
the person in default.
(4) Nothing in this section shall be taken to authorise the use
of an invention or the giving of any directions in such manner as to
prejudice or affect the mutual rights or obligations of trustees
or the personal representatives of a deceased person, or any rights
or obligations arising out of those relationships.
(5) An order of the Comptroller giving any directions or re-
fusing an application made under this section shall be subject to
appeal to the court.
[Compare Sec. 37 of the Indian Act.]
38. Avoidance of certain conditions attached to the sale,
etc., of patented articles. — (1) It shall not be lawful in any contract
made after the passing of this Act in relation to the sale or lease of,
or licence to use or work, any article or process protected by a
patent to insert a condition the effect of which will be —
(a) to prohibit or restrict the purchaser, lessee, or licensee
from using any article or class of articles, whether
patented or not, or any patented process, supplied or
owned by any person other than the seller, lessor, or
licensor or his nominees ; or
(b) to require the purchaser, lessee or licensee to acquire
from the seller, lessor, licensor, or his nominees, any
article or class of articles not protected by tho patent ;
APPENDIX III
897
find any such condition shall be null and void, as being in restraint
of trade and contrary to public policy :
Provided that this sub-section shall not apply if —
(i) the seller, lessor, or licensor proves that at the time the
contract was entered into the purchaser, lessee, or
licensee had the option of purchasing the article or
obtaining a lease or licence on reasonable terms, without
such conditions as aforesaid ; and
(ii) the contract entitles the purchaser, lessee, or licensee
to relieve himself of his liability to observe any such
condition on giving the other party three months notice
in writing and on payment in compensation for such
relief in the case of a purchase of such sum, or in the
case of a lease or licence of such rent or royalty for the
residue of the term of the contract, as may be fixed by
an arbitrator appointed by the Board of Trade.
In any action, application, or proceedings under this Act no
person shall be estopped from applying for or obtaining relief by
reason of any admission made by him as to the reasonableness of
the terms offered to him under sub-section (1) (i).
(2) Any contract relating to the lease of or licence to use or
work any patented article or patented process, whether made before
or after the passing of this Act, may at any time after the patent or
all the patents by which the article or process was protected at the
time of the making of the contract has or have ceased to be in force,
and notwithstanding anything in tho same or in any other contract
to the contrary, be determined by either party on giving three
months notice in writing to the other party ; but where any such
notice is given determining any contract made before the passing of
this Act, the party giving the notice shall be liable to pay such
compensation as, failing agreement, may be awarded by an arbitrator
appointed by the Board of Trade.
(3) Any contract made before the passing of this Act relating
to the lease of or licence to use or work any patented article or
process and containing any condition which, had the contract been
made after the passing of this Act, would by virtue of this section
have been null and void may, at any time before the contract is
113
THE LAW OF PATENTS IN IlfolA
determinable under the last preceding sub-section, and notwith-
standing anything in the same or any other contract to the contrary,
be determined by either party on giving three months notice in writ-
ing to the other party, but where any such notice is given the party
giving the notice shall be liable to pay such compensation as, failing
agreement, may be awarded by an arbitrator appointed by the Board
of Trade.
(4) The insertion by the patentee in a contract made after the
passing of this Act of any condition which by virtue of this section
is null and void shall be available as a defence to an action for in-
fringement of the patent to which the contract relates brought
while that oontract is in force.
(5) Nothing in this section shall —
(a) affect any condition in a contract whereby a person is
prohibited from selling any goods other than those of a
particular person ; or
(b) be construed as validating any contract which would,
apart from this section, be invalid ; or
(c) affect any right of determining a contract or condition
in a contract exerciseablc independently of this section ;
or
(d) affect any condition in a contract for the lease of or
licence to use a patented article, whereby the lessor or
licensor reserves to himself or his nominees the right
to supply such new parts of the patented article as may
be required to put or keep it in repair.
38A. Chemical products and substances intended for food
or medicine. — (1) In the case of inventions relating to substances
prepared or produced by chemical processes or intended for food or
medicine, the specification shall not include claims for the substance
itself, except when prepared or produced by the methods or processes
of manufacture particularly described and ascertained or by their
obviouB chemical equivalents :
Provided that in relation to a substance intended for food or
medicine a mere admixture resulting only in the aggregation of the
known properties of the ingredients of that substance shall not be
deemed to be a method or process of manufacture.
APPENDIX III
(2) In an action for infringement of a patent where the in*
vention relates to the production of a new substance, any substance
of the same chemical composition and constitution shall In the
absence of proof to the contrary be deemed to have been produced
by the patented process.
(3) In the case of any patent for an invention intended for or
capable of being used for the preparation or production of food or
medicine, the Comptroller shall, unless he sees good reason to the
contrary, grant to any person applying for the same, a licence limi-
ted to the use of the invention for the purposes of the preparation
or production of food or medicine but not otherwise ; and, in
settling the terms of such licence and fixing the amount of royalty
or other consideration payable, the Comptroller shall have regard to
the desirability of making the food or medicine available to the
public at the lowest possible price consistent with giving to the
inventor due reward for the research leading to the invention.
Any decision of the Comptroller under this sub-section shall be
subject to appeal to the court.
[There are no provisions in the Indian Act similar to the pro-
visions of this Section. See page 139 above.]
41. Provisions as to anticipation, — (1) An invention covered
by a patent shall not be deemed to have been anticipated by reason
only of its being made available to the public by publication in the
United Kingdom —
(a) in a specification left pursuant to an application made
in the United Kingdom and dated not less than fifty
years before the date of the patent ; or
(b) in a specification describing the invention for the
purpose of an application for protection in any coun-
try outside the United Kingdom made not less than
fifty years before that date, or
(c) in any abridgement of or extract from any such speci-
fication published under the authority of the Comp-
troller or of the Government of any country outside
the United Kingdom, or
(d) in a provisional specification of any date not followed
by a complete specification,
900
THE LAW OF PATENTS IN INDIA
(2) A patent shall not be held to be invalid by reason only of
the invention in respect of which the patent was granted or any part
thereof having been published prior to the date of the patent, if the
patentee proves to the satisfaction of the court that the publication
was made without the knowledge and consent of the true inventor,
and that the matter published was derived or obtained from the true
inventor, and if the true inventor learnt of the publication before
the date of his application for the patent that he applied for and
obtained protection for the invention with all reasonable diligence
after learning of the publication :
Provided that the protection afforded by this sub-section shall
not extend to a patentee who has or whose predecessors in title
(which expression shall include the applicant for the patent) have
commercially worked the invention in the United Kingdom other-
wise than for the purpose of reasonable trial of the invention prior
to the date of the application for the patent.
[Compare and contrast Sec. 38 of the Indian Act.]
42. Disconformity. — A patent shall not be held to be invalid
on the ground that the complete specification claims a further or
different invention to that contained in the provisional, if the inven-
tion therein claimed, so far as it is not contained in the provisional,
was novel at the date when the complete specification was put in,
and the applicant was the first and true inventor thereof.
43. Patent on application of representative of deceased
inventor. — (l) v If the person claiming to be inventor of an invention
dies without making an application for a patent for the invention,
application may be made by, and a patent for the invention granted
to, his legal representative.
(2) Every such application must contain a declaration by the
legal representative that he believes the deceased to be the true and
first inventor of the invention.
[See page 338 above.]
44. Loss or destruction of patent. — If a patent is lost or
destroyed, or its non-production is accounted for to the satisfaction
of the Comptroller, the Comptroller may at any time seal a duplicate
thereof.
[Sec. 39 of the Indian Act.]
APPENDIX III
901
44A. Request for information as to patent or patent appli-
cation. — A person making a request to the Comptroller in the pres-
cribed manner as respects any patent specified in the request or as
respects any application for a patent so specified, for information to
be furnished to him by the Comptroller of any such matters as may
be prescribed affecting that patent or application, shall be en-
titled, subject to payment of the prescribed fees, to have information
furnished to him accordingly.
45. Provisions as to exhibitions. — (1) The exhibition of an in-
vention at an industrial or international exhibition, certified as such
by the Board of Trade, or the publication of any description of the
invention during the period of the holding of the exhibition, or the
use of the invention for the purpose of the exhibition in the place
where the exhibition is held, or the use of the invention during the
period of the holding of the exhibition by any person elsewhere,
without the privity or consent of the inventor, or the reading of a
paper by an inventor before a learned society or the publication of
the paper in the society’s transactions, shall not prejudice the right
of the inventor to apply for and obtain a patent in respect of the
invention or the validity of any patent granted on the application,
provided that —
(a) the exhibitor, before exhibiting the invention, or the
person reading such paper or permitting such publica-
tion, gives the Comptroller the prescribed notice of
his intention to do so ; and
(b) the application for a patent is made before or within
six months from the date of the o|>cning of the exhibi-
tion, or the reading or publication of such paper.
(2) His Majesty may by Order in Council apply this section
to any exhibition mentioned in the Order in like manner as if it were
an industrial or international exhibition certified as such by the
Board of Trade, and any such Order may provide that the exhibitor
shall be relieved from the condition of giving notice to the Comp-
troller of his intention to exhibit, and shall bo so relieved either
absolutely or upon such terms and conditions as may be stated in
the Order.
[Compare Sec. 40 of the Indian Act.]
902
THE LAW OP PATENTS IN INDIA
46. Publication of Journal, indexes, etc.— (1) The Comp*
trailer shall issue periodically a journal of patented inventions, as
well as reports of patent cases decided by courts of law, reports of
decisions of the Comptroller, of the law officer, or of the Appeal
Tribunal, and any other information that he may deem generally
useful or important.
(2) Provision shall be made by the Comptroller for keeping
on sale copies of such journal, and also of all complete specifications
of patents in force, with any accompanying drawings.
(3) The Comptroller shall continue, in such form as he deems
expedient, the indexes and abridgements of specifications hitherto
published, and shall prepare and publish such other indexes, abridge-
ments of specifications, catalogues, and other works relating to
inventions, as he thinks fit.
[There are no provisions in the Indian Act similar to those of
this section. But see regarding the publications of the Indian Patent
office page 65 above.]
47. Patent Museum. — (1) The control and management of the
Patent Museum and its contents shall remain vested in the Board of
Education, subject to such directions as His Majesty in Council
may think fit to give.
(2) The Board of Education may at any time require a
patentee to furnish them with a model of his invention on payment
to the patentee of the cost of the manufacture of the model, the
amount to be settled, in case of dispute, by the Board of Trade.
[Compare Sec. 41 of the Indian Act.]
48. Special provisions as to vessels, aircraft and land vehi-
cles. — (1) Subject to the provisions of this section, the rights of
a patentee shall not be deemed to be infringed —
(a) by the use on board a foreign vessel of the patented
invention in the body of the vessel or in the machinery,
tackle, apparatus or other accessories thereof, if the
vessel comes into the territorial jurisdiction waters of
' the United Kingdom temporarily or accidentally only,
and the invention is used exclusively for the actual -
needs of the vessel ;
Appendix ut
603
(b) by the use of the patented invention in the construction
or working of a foreign aircraft or land vehicle or of the
accessories thereof if the aircraft or vehicle comes into
the United Kingdom temporarily or accidentally only.
(2) This section shall apply only to vessels, aircraft, and land
vehicles of a foreign state with respect to which His Majesty by
Order in Council declares that the laws thereof confer corresponding
rights with respect to the use of inventions in vessels, aircraft and
land vehicles of the United Kingdom when coining into the foreign
state or the territorial waters thereof.
(3) For the purposes of this section —
Vessels and aircraft shall be deemed to be vessels and aircraft
of the country in which they are registered, and land vehicles shall
be deemed to be vehicles of the country within which the owners are
ordinarily resident :
The Isle of Man shall be deemed to be part of the United
Kingdom.
(4) His Majesty may by Order in Council apply this section to
vessels, aircraft and land vehicles of a part of His Majesty's domi-
nions outside the United Kingdom in the like manner as to vessels,
aircraft and land vehicles of a foreign state.
[Compare Sec. 42 of the Indian Act.]
PART II
DESIGNS
(K B. Sections 40 — 61 comprising Part II, since they relate
exclusively to Designs, have here been. omitted.)
PART III
GENERAL
Patent Office, and Proceedings thereat.
62. Patent Office. — (1) The Treasury may continue to provide
for the purposes of this Act and the Trade Marks Acts, 1905, an
office with all requisite buildings and conveniences, which shall be
called, and is in this Act referred to as, the Patent Office.
(2) The Patent Office shall be under the immediate control
of the comptroller, who shall act under the superintendence and
direction of the Board of Trade.
(3) Any act or thing directed to be done by or to the comp-
troller may be done by or to any officer authorised by the Board of
Trade.
(4) Rules under this Act may provide for the establishment
of branch offices for designs at Manchester or elsewhere, and for any
document or thing required by this Act to be sent to or done at the
Patent office being sent to or done at any branch office which may
be established.
[Compare Sec. 55 of the Indian Act.]
63. Officers and clerks. — (1) There shall continue to be a
comptroller-general of patents, designs, and trade marks, and the
Board of Trade may, subject to the approval of the Treasury, appoint
the comptroller, and so many examiners and other officers and clerks,
with such designations and duties as the Board of Trade think fit,
and may remove any of those officers and clerks.
(2) The salaries of those officers and clerks shall be appointed
by the Board of Trade with the concurrence of the Treasury, and
those salaries and the other expenses of the execution of this Act
and the Trade Marks Act, 1905, shall continue to be paid out of
money provided by Parliament.
[Compare Sec. 56 of the Indian Act.]
64. Seal of Patent Office. — Impressions of the seal of the
Patent Office shall be judicially noticed and admitted in evidence,
[Compare Sec. 55(3) of the Indian Act.]
APPENDIX ill
Fees.
65. Fees. — There shall be paid in respect of the grant of
patents and the registration of designs, and applications therefor,
and in respect of other matters with relation to patents and designs
under this Act, such fees as may be, with the sanction of the Trea-
sury, prescribed by the Board of Trade, so however that the fees
prescribed in respect of the instruments and matters mentioned in
respect of the instruments and matters mentioned in the First
Schedule to this Act shall not exceed those specified in that
Schedule.
[Compare Sec. 57 of the Indian Act.]
Provisions as to Registers and other Documents
in Patent Office.
66. Trust not to be entered in registers. — There shall not be
entered in any register kept under this Act, or be receivable by the
comptroller, any notice of any trust expressed implied or constructive.
[Compare Sec. 58 of the Indian Act.]
67. Inspection of and extracts from registers. — Every regis-
ter kept under this Act shall at all convenient times be open to the
inspection of the public, subject to the provisions of this Act, and
to such regulations as may be prescribed ; and certified copies,
sealed with the seal of the Patent Office, of any entry in any such
register shall be given to any person requiring the same on payment
of the prescribed fee.
[Compare Sec. 59 of the Indian Act.]
68. Privilege of reports of examiners. — Reports of examiners
made under this Act shall not in any case be published or be open
to publio inspection, and shall not be liable to production or inspec-
tion in any legal proceeding, unless the court or officer having power
to order discovery in such legal proceeding certifies that such pro-
duction or inspection is desirable in the interests of justice, and
ought to be allowed :
Provided that, on application being mado by any person in the
prescribed form, the comptroller may disclose the result of a search
made under section seven or eight of this Act on any i>articular
application for the grant of a patent where either —
(a) the complete specification has been aocepted ; or
1U
dod
THE LAW OF PATENTS IN INDIA
(b) the complete specification has been published and the
application has become void.
[Compare Sec. 60 of the Indian Act.]
69. Prohibition of publication of specification, drawings,
etc., where application abandoned, etc. — (1) Where an application
for a patent has been abandoned, or become void, the application,
the specification and the drawings samples and specimens (if any)
accompanying or left in connection with such application, shall not,
save as otherwise expressly provided by this Act, at any time be
open to public inspection or be published by the comptroller.
(2) (Relates only to Designs.)
[Compare Sec. 61(1) of the Indian Act.]
70. Power for comptroller to correct clerical errors. — The
comptroller may, on request in writing accompanied by the pres-
cribed fee, —
(a) correct any clerical error in or in connection with an
application for a patent or in any patent or any speci-
fication ;
(b) cancel the registration of a design either wholly or in
respect of any particular goods in connection with
which the design is registered ;
(c) correct any error in an application for the registration of
or in the representation of a design or in the name or
address of the proprietor of any patent or design, or in
any other matter which is entered upon the register of
patents or the register of designs :
Provided that where a request is made for a correction under
pragraph (a) of this section and it appears to the comptroller that
the correction would materially alter the meaning or scope of the
document to which the request relates, and ought not to be made
without notice to persons affected thereby, he shall require a notice
of the nature of the proposed correction to be advertised in the
prescribed manner, and any person may within the prescribed time
and in the prescribed manner give notice at the Patent Office of
opposition to the request and, where any such notice is given, the
comptroller shall, after giving notice of the opposition to the appli-
cant and after giving to the applicant and to the opponent an oppor-
tunity of being heard, decide on the case.
[Compare Sec. 62 of the Indian Act.]
APPENDIX III
907
71. Registration of assignments, etc. (1) Where a person
becomes entitled by assignment, transmission, or other operation of
law to a patent or to the copyright in a registered design, he shall
make application to the comptroller in the prescribed manner to
register his title, and the comptroller shall, on receipt of such appli*
cation and on proof of title to his satisfaction, register him as the
proprietor of such patent or design and shall cause an entry to be
made on the register of the assignment, transmission or other instru-
ment effecting the title.
(2) Where any person becomes entitled as mortgagee, licensee,
or otherwise to any interest in a patent or design, he shall make
application to the comptroller in the prescribed manner to register
his title, and the comptroller shall, on receipt of such application
and on proof of title to his satisfaction, cause notice of the interest
to bo entered in the register of patents or dosigns, as the case may
be, with particulars of the instrument, if any, creating such interest.
(3) The person registered as the proprietor of a patent or
design shall subject to the provisions of tho Act and to any rights
appearing from the register to be vested in any other person, have
power absolutely to assign, grant licences as to or otherwise deal
with the patent or design and to give effectual receipts for any
consideration for any such assignment licence or dealing :
Provided that any equities in respect of the patent or design
may be enforced in like manner as in respect of any other personal
property.
(4) Except in applications made under section seventy-two
of this Act, a document or instrument in respect of which no entry
has been made in the register in accordance with tho provisions of
sub-sections (1) and (2) aforesaid, shall not be admitted in evidenco
in any court in proof of the title to a patent or copyright in a design
or to any interest therein unless the court otherwise directs.
[Compare Sec. 63 of the Indian Act.]
72. Rectification of registers by court.— (1) The court may,
on the application in the prescribed manner of any person aggrieved
by the non-insertion in or omission from the register of patents or
designs of any entry or by any entry made in either such register
without sufficient cause, or by any entry wrongly remaining on either
such register, or by an error or defect in any entry to either such
008
THE LAW OF PATENTS IN INDIA
register, make such order for making, expunging, or varying such
entry as it may think fit.
(2) The court may in any proceeding under this section
decide any question that it may be neoessary or expedient to decide
in oonnection with the rectification of a register.
(3) The prescribed notice of any application under this section
shall be given to the oomptroller, who shall have the right to appear
and be heard thereon, and shall appear if so directed by the Court,
(4) Any order of the court rectifying a register shall direct
that notice of the rectification be served on the oomptroller in the
prescribed manner, who shall upon the receipt of such notice rectify
the register accordingly.
[Compare Sec. 64 of the Indian Act.]
Powers and Duties of Comptroller.
73. Exercise of discretionary power by comptroller. —
Where any discretionary power is by or under this Act given to the
comptroller, he shall not exercise that power adversely to the appli-
cant for a patent, or for amendment of a specification, or for registra-
tion of a design without (if so required within the prescribed time by
the applicant) giving the applicant an opportunity of being heard.
[Compare Sec. 67 of the Indian Act.]
73 A. Costs and security for costs — (1) The comptroller
shall, in any proceedings before him under this Act, have power by
order to award to any party such costs as he may consider reason-
able, and to direct how and by what parties they are to be paid, and
any such order may be made a rule of court.
(2) If any party giving notice of any opposition under this
Act, or applying to the comptroller for the revocation of a patent
or for the cancellation of the registration of a design or for the grant
of a compulsory licence in relation to a patent or to a registered de-
sign or giving notice of appeal from any decision of the comptroller
under this Act, neither resides nor carries on business in the United
Kingdom or the Isle of Man, the comptroller, or in the case of
appeal to the Appeal Tribunal or the court, the Appeal Tribunal
or the court may require such party to give security for the ooats
of the proceedings or appeal, and in default of such security being
given may proceed to treat the proceedings or appeal as abanoned,
[Compare Seo. 74A of the Indian Aot]
APPENDIX III
900
74. ....(Repealed.)
75. Refusal to grant patent, ete.. in oertain eases. — If any
application is made to the comptroller to grant a patent for an in-
vention which is so obviously oontrary to well-established natural
laws that the application is frivolous or to grant a patent for an
invention, or to register a design, of which the use would, in his
opinion, be oontrary to law or morality the comptroller may refuse
the application, or may, in the case of an invention any particular
use of which would, in his opinion, be contrary to law, require as a
condition of granting a patent the insertion in the specification of
such disclaimer as respects that particular use of the invention or
any such other reference to the illegality thereof as he thinks fit.
An appeal shall lie from the deoision of the comptroller under
this section to the Appeal Tribunal.
[Compare Sec. 09 of the Indian Act.]
76. Annual reports of comptroller. — The comptroller shall,
before the first day of June in every year, cause a report respecting
the execution by or under him of this Act to bo laid before both
Houses of Parliament, and therein shall include for the year to which
the report relates an account of all fees, salaries, and allowances,
and other money received and paid under this Act.
[Compare Sec. 66 of the Indian Act.]
Evidence &c.
77. Evidence before comptroller. — (1) Subject to rules under
this Act in any proceeding under this Act before the comptroller
the evidence shall be given by statutory declaration in the absence of
directions to the contrary ; but in any case in which the comptroller
thinks it right so to do, he may take evidence viva voce in lieu of or
in addition to evidence by declaration or allow any declarant to be
cross-examined on his declaration. Any such statutory declaration
may in the case of appeal be used before the court in lieu of evidence
by affidavit, but if so used shall have all the incidents and conse-
quences of evidence by affidavit.
(2) The comptroller shall in respeot of discovery and produc-
tion of documents and, where any evidence is taken viva voce, in
respect of requiring the attendance of witnesses and taking evidenoe
910
THE LAW OP PATENTS IN INDIA
on oath, be in the same position in all respects as an official referee
of the Supreme Court.
[Compare Sec. 65 of the Indian Act.]
78. Certificate of comptroller to be evidence. — A certificate
purporting to be under the hand of the comptroller as to any entry,
matter, or thing which he is authorised by this Act, or any general
rules made thereunder, to make or do, shall be prima facie evidence
of the entry having been made, and of the oontents thereof, and of
the matter or thing having been done or left undone.
[Compare Sec. 71 of the Indian Act.]
79. Evidence of documents in Patent Office. — Printed or
written copies or extracts, purporting to be certified by the comp-
troller and sealed with the seal of the Patent Office, of or from
patents, specifications, and Other documents in the Patent Office,
and of or from registers and other books kept there, shall be admit-
ted in evidence in all courts in His Majesty’s dominions, and in all
proceedings, without further proof or production of the originals.
80. (Repealed.)
81. Applications and notices by post. — Any application, notice
or other document authorised or required to be left, made, or given
at the Patent Office or to the comptroller, or to any other person
under this Act, may be sent by post.
[Sec. 73 of the Indian Act.]
82. Excluded days. — Where the last day fixed by this Act for
doing anything under this Act falls on any day specified in rules
under this Act as an excluded day, the rules may provide for the
thing being done on the next following day not being an excluded
day.
83. Declaration by infant, person of unsound mind, etc. — (1)
If any person is, by reason of infancy, unsoundness of mind, or other
disability, incapable of making any declaration or doing anything
required or permitted by or under this Act, the guardian or com-
mittee (if any) of the person subject to the disability, or, if there be
none, any person appointed by any court possessing jurisdiction in
respect of his property, may make such declaration or a declaration
as nearly corresponding thereto as circumstances permit, and do
suoh thing in the name and on behalf of the person subject to the
disability.
Appendix in
oil
(2) An appointment may be made by the court for the pur-
poses of this seotion upon the petition of any person acting on
behalf of the person subject to the disability or of any other person
interested in the making of the declaration or the doing of the thing.
[Compare Sec. 74 of the Indian Act.]
8BA. Enforcement of order for grant of licence. — Any order
for the grant of a licence under this Act shall, without prejudice to
any other method of enforcement, operate as if it were embodied in
a deed granting a licence executed by the patentee or proprietor of
a registered design as the case may be and all other necessary par-
ties.
Register of Patent Agents.
84. Registration of patent agents< — (1) No person shall prac-
tice, describe himself, or hold himself out, or permit himself to be
described or held out, as a patent agent, unless —
(a) in the case of an individual, he is registered as a patent
agent in the register of patent agents ;
(b) in the case of a firm, every partner of the firm is so
registered ;
(c) in the case of a company which commenced to carry on
business as a patent agent after the seventeenth day of
November, nineteenth hundred and seventeen, every
director and the manager (if any) of the company is so
registered :
(d) in the case of a company which commenced to carry on
business as a patent agent before that date, a manager
or director of the company is so registered ;
Provided that in the last-mentioned case the name of such
manager or director shall be mentioned as being a registered patent
agent in all professional advertisements, circulars or letters in which
the name of the company appears.
(2) If any person contravenes the provisions of this section,
he shall be liable on conviction under the summary Jurisdiction
Acts to a fine not exceeding twenty pounds or in the case of a second
or subsequent conviction to a fine not exceeding fifty pounds, and in
the case of a company every director, manager, secretary, or other
THE LAW OF PATENTS IN INDIA
612
officer of the company who is knowingly a party to the contraven-
tion shall be guilty of a like offence and liable to a like fine.
(3) Notwithstanding anything in any enactment prescribing
the time within which proceedings may be brought before a court
of summary jurisdiction, proceedings for an offence under this
section may be commenced at any time within twelve months from
the date on which the alleged offence was committed.
(4) For the purposes of this section, the expression "patent
agent” means a person, firm, or company carrying on for gain in the
United Kingdom the business of applying for or obtaining patents
in the United Kingdom or elsewhere.
(5) Nothing in this section shall be taken to prohibit solici-
tors from taking such part as they have heretofore taken in any
proceedings under this Act.
(6) No person not registered before the fifteenth day of July,
nineteen hundred and nineteen, shall be registered as a patent
agent unless he be a British subject.
85. Agents for patents.— (1) Rules under this Act may
authorise the comptroller to refuse to recognise as agent in respect
of any business under this Act any person whose name has been
erased from the register of patent agents, or (during the term of his
suspension) any person who has been suspended from acting as a
patent agent, or who is proved to the satisfaction of the Board of
Trade, aft^r being given an opportunity of being heard, to have been
convicted of such an offence or to have been guilty of such mis-
conduct as would have rendered him liable, if his name had been on
the register of patent agents, to have his name erased therefrom, and
may authorise the comptroller to refuse to recognise as agent in
respect of any business under this Aot any company whioh, if it had
been an individual, the comptroller could refuse to recognise as snob
agent.
(2) Where a company or firm acts as agents, Booh rules as
aforesaid may authorise the comptroller to refuse to recognise the
oompany or firm as agent if any person whom the comptroller could
refuse to recognise as an agent aots as director or manager of the
oompany or is a partner in the firm.
(3) The comptroller shall refuse to recognise as agent in
APPENDIX III
91S
respect of any business under this Act any person who neither
resides nor has a place of business in the United Kingdom or the
Isle of Man.
[There are no provisions in the Indian Act corresponding to
these relating to a Register of Patent Agents. There is no Registra-
tion of Patent Agents in India. See pages 91 — 105 above.]
Powers, etc. of Board of Trade.
86. Power for Board of Trade to make general rules. —
(I) The Board of Trade may make such general rules and do such
things as they think expedient, subject to the provisions of this Act —
(aj For regulating the practice of registration under this
Act :
(b) For classifying goods for the purposes of designs :
(c) For making or requiring duplicates of specifications,
drawings, and other documents :
(d) For securing and regulating the publishing and selling
of copies, at such prices and in such manner as the
Board of Trade think fit, of specifications, drawings, and
other documents :
(e) For securing and regulating the making, printing, publi-
shing, and selling of indexes to, and abridgments of,
specifications and other documents in the Patent Office;
and providing for the inspection of indexes and abridg-
ments and other documents :
(f) For regulating (with the approval of the Treasury^
the presentation of copies of Patent Office publications
to patentees and to public authorities, bodies, and insti-
tutions at home and abroad :
(g) For regulating the keeping of the register of patent
agents under this Act :
(h) Generally for regulating the business of the Patent
Office, and all things by this Act placed under the
direction or control of the comptroller, or of the Board
of Trade.
(2) General rales shall whilst in force be of the same effect as
if they were contained in this Act.
115
the laW of Patents in indIa
014
(3) Any rules made in pursuance of this section shall be
advertised twice in the Official Journal (Patents), and shall be laid
before both Houses of Parliament as soon as practicable after they
are made, and if either House of Parliament, within the next forty
days after any rules have been so laid before that House, resolves
that the rules or any of them ought to be annulled, the rules or those
to which the resolution applies shall after the date of such resolution
be of no effect, without prejudice to the validity of anything done in
the meantime under the rules or to the making of any new rules.
[Compare Sec. 77 of the Indian Act.]
87. Proceedings of the Board of Trade. — (1) All things
required or authorised under this Act to be done by, to, or before the
Board of Trade, may be done by, to, or before the President or a
secretary or an assistant secretary of the Board.
(2) All documents purporting to be orders made by the Board
of Trade and to be sealed with the seal of the Board, or to be signed
by a secretary or assistant secretary of the Board, or by any person
authorised in that behalf by the President of the Board, shall be
received in evidence, and shall bo deemed to be such orders without
further proof, unless the contrary is shown.
(3) A certificate, signed by the President of the Board of
Trade, that any order made or act done is the order or act of the
Board, shall be conclusive evidence of the fact so certified.
88. Provision as to Order in Council. — An Order in Council
under this Act shall, from a dato to be mentioned for the purpose in
the Order, take effect as if it had been contained in this Act ; but
may be revoked or varied by a subsequent Order.
Offences.
89. Offences. — (1) If any person makes or causes to be made
a false entry in any register kept under this Act, or a writing falsely
purporting to be a copy of an entry in any such register, or produces
or tenders or causes to be produced or tendered in evidence any
such writing, knowing the entry or writing to be false, he shall be
guilty of a misdemeanour.
(2) If any person falsely represents that any article sold by
him is a patented article, or falsely describes any design applied to
APPENDIX III
915
any article sold by him as registered, he shall be liable for every
offence, on conviction under the Summary Jurisdiction Acts, to a
fine not exceeding five pounds.
(3) If any person sells an article having stamped, engraved, or
impressed thereon or otherwise applied thereto the word “patent”
“patented,” “registered,” or any other word expressing or implying
that the article is patented or that the design applied thereto is
registered, he shall be deemed for the purposes of this section to
represent that the articlo is a patented article or that the design
applied thereto is a registered design.
(4) Any person who, after the copyright in a design has
expired, puts or causes to be put on any article to which the design
has been applied the word “registered,” or any word or words imply-
ing that there is a subsisting copyright in the design, shall be liable
on conviction under the Summary Jurisdiction Acts to a fino not
exceeding five pounds.
(5) If any person uses on his place of business, or on any
document issued by him, or otherwise, the words “Patent Office,” or
any other words suggesting that his place of business is officially
connected with, or is, the Patent Office, he shall be liable on convic-
tion under the Summary Jurisdiction Acts to a fine not exceeding
twenty pounds.
[Compare Sec. 78 of the Indian Act.]
90. Unauthorised assumption of Royal Arms.— (1) The grant
of a patent under this Act shall not bo deemed to authorise the
patentee to use the Royal Arms or to place the Royal Arms on any
patented article.
(2) If any person, without the authority of His Majesty, uses
in connection with any business, trade, calling, or profession the
Royal Arms (or arms so nearly resembling them as to be calculated
to deceive) in such manner as to be calculated to lead to the belief
that he is duly authorised to use the Royal Arms, he Bhall be liable
on conviction under the Summary Jurisdiction Acts to a fine not
exceeding twenty pounds :
Provided that nothing in this section shall be construed as
affecting the right, if any, of the proprietor of a trade mark con-
taining such arms to continue to use such trade iqark>
916
THE LAW OF PATENTS IN INDIA
International and Colonial Arrangements,
91. International and Colonial arrangements. — (1) If His
Majesty is pleased to make any arrangement with the government
of any foreign state for mutual protection of inventions, or designs,
or. trade marks, then any person who has applied for protection for
any invention, design, or trade mark in that state or his legal
representative or assignee shall be entitled to a patent for his inven-
tion . or to registration of his design or trade mark under this Act or
the Trade Marks Act, 1905, in priority to other applicants ; and the
patent or registration shall have the same date as the date of the
application in the foreign state.
Provided that —
(a) The application is dated, in the case of a patent within
twelve months, and in the case of a design or trade mark
within six months, from the application for protection
in the foreign state ; and
(b) Nothing in this section shall entitle the patentee or
proprietor of the design or trade mark to recover
damages for infringements happening prior to the actual
date on which his complete specification is accepted, or
his design or trade mark is registered, in this country.
(2) Where the same applicant has made two or more appli-
cations for protection of inventions in any foreign state to which
the provisions of this section apply, and the comptroller is of opinion
that the whole of the inventions in respect of which the applications
were made are such as to constitute a single invention and may
properly be included in one patent, he may, if a separate application
dated within twelve months from the date of the earliest of the
foreign applications is made in respect of each of the foreign appli-
cations, accept one complete specification in respect of the whole of
those inventions and grant a single patent thereon. The patent
shall bear the date of the earliest of the foreign applications, but in
considering the validity thereof and in determining other questions
under this Act, the court or the comptroller, as the case may be,
shall have regard to the respective dates of the foreign applications
relating to the several matters claimed in the specification.
APPENDIX III
917
(3) The patent granted for the invention or the registration
of a design or trade mark shall not be invalidated —
(a) in the case of a patent, by reason only of the publication
of a description of, or use of, the invention ; or
(b) in the case of a design, by reason only of the exhibition
or use of, or the publication of a description or represen*
tation of, the design ; or
(c) in the case of a trade mark, by reason only of the use
of the trade mark,
in the United Kingdom or the Isle of Man during the period
specified in this section as that within which the application may be
made.
(4) The application for the grant of a patent, or the registra-
tion of a design, or the registration of a trade mark under this
section, must be made in the same manner as an ordinary application
under this Act or the Trade Marks Act, 1905 : Provided that —
(a) In the case of patents the application shall be accom-
panied by a complete specification, which, if it is not
accepted within eighteen months from the application
for protection in the foreign state, or in the case of
applications made in accordance with the provisions of
subsection (2) of this section from the earliest of the
applications for protection in the foreign state, shall
with the drawings, samples and specimens (if any) be
open to public inspection at the expiration of that
period ; and
(b) In the case of trade marks, any trade mark the regis-
tration of which has been duly applied for in the
country of origin may be registered under the Trade
Marks Act, 1905.
(5) The provisions of this section shall apply only in the case
of those foreign states with respect to which His Majesty by Order
in Council declares them to be applicable, and so long only in the
case of each state as the Order in Council continues in force with
respect to that state.
(6) Where it is made to appear to His Majesty that the
legislature of any part of His Majesty’s dominions outside the
918
THE LAW OP PATENTS IN INDIA
United Kingdom has made satisfactory provision for the protection
of inventions, designs ( or trade marks, patented or registered in this
country, it shall be lawful for His Majesty, by Order in Council, to
apply the provisions of this section to that part of His Majesty’s
dominions, with such variations or additions, if any, as may be stated
in the Order.
[Compare the reciprocal arrangements contained in Sec. 78 of
the Indian Act. There are no international arrangements under the
Indian Act for reciprocity between India and foreign states. See
pages 352-365 above.]
Definitions
92. Provisions as to “the court”. — (1) In this Act, unless the
context otherwise requires, “the court” means, subject to the provi-
sions as to Scotland, Northern Ireland, and the Isle of Man, the High
Court in England.
(2) Where by virtue of this Act a decision of the Comptroller
is subject to an appeal to the court, or a petition may be referred or
presented to the court, the appeal shall, except in the case of a
petition for the revocation of a patent under section twenty-five of
this Act, and subject to and in accordance with rules of the Supreme
Court, be made and the petition referred or presented to such judge
of the High Court as the Lord Chancellor may select for the pur-
pose. An appeal shall not lie from any decision of such judge
except in the case of nn order revoking or confirming the revocation
of a patent.
92 A. Tribunal for appeals from the Comptroller. — (1) For
the purpose of hearing appeals from decisions of the Comptroller,
which, by virtue of this Act, are subject to an appeal to the Appeal
Tribunal, there shall be constituted a tribunal (in this Act referred
to as the “Appeal Tribunal”) to consist of a judge of the High Court
to be nominated by the Lord Chancellor.
(2) The expenses of the Appeal Tribunal shall be defrayed
and the fees to be taken therein may be fixed as if the Tribunal
were a court of the High Court, but subject as aforesaid appeals
to the Tribunal shall not be deemed to be proceedings in the High
Court.
APPENDIX III 0±9
(3) The Appeal Tribunal may —
(a) examine witnesses on oath and administer oaths (or that
purpose ;
(b) make rules regulating appeals to the Tribunal and the
practice and proceedings before the Tribunal under
this Act ; and
(c) in any proceedings under this Act by order award to
any party such costs as the Tribunal consider reason-
able and direct how and by what parties they are to
be paid and any such order may be made a rule of
court ;
so however that, as respects rights of audience and the awarding
of costs, the like practice shall be observed as, before the commence-
ment of the Patents and Designs Act, 1932, was observed in the
hearing of appeals by the law officer.
(4) The Appeal Tribunal may, if it thinks fit, obtain the assis-
tance of an expert, who shall be paid such remuneration as the
Tribunal, with the consent of the Treasury, may determine.
93. Definitions. — In this Act, unless the context otherwise
requires, —
“Prescribed” means proscribed by general rules under this Act :
“His Majesty's dominions outside the United Kingdom”
includes any territory under His Majesty's protection
or in respect of which a mandate on behalf of the
League of Nations is being exercised by His Majesty,
but does not include the Isle of Man or the Channel
Islands :
“Patent” means letters patent for an invention :
“Patentee” means the person for the time being entered on
the register as the grantee or proprietor of the patent s
“Invention” means any manner of new manufacture the
subject of letters patent and grant of privilege within
section six of the Statute of Monopolies, and includes
an alleged invention :
“Inventor” and “applicant” shall, subject to the provisions
of this Act, include the legal representative of a deceas-
ed inventor or applicant :
THE LAW OF PATENTS IN INDIA
“Design” means only the features of shape, configuration,
pattern or ornament applied to any article by any indus-
trial process or means, whether manual, mechanical, or
chemical, separate or combined, which in the finished
article appeal to and are judged solely by the eye ; but
does not include any mode or principle of construction,
or anything which is in substance a mere mechanical
device :
“Article” means (as respects designs) any article of manu-
facture and any substance artificial or natural, or partly
artificial any partly natural :
“Copyright” means the exclusive right to apply a design to
any article in any class in which the design is regis-
tered :
“Proprietor of a new or original design” —
(a) Where the author of the design, for good consideration,
executes the work for some other person, means the
person for whom the design is so executed ; and
(b) Where any person acquires the design or the right to
apply the design to any article either exclusively, of any
other person or otherwise, means, in the respect and to
the extent in and to which the design or right has been
so acquired, the person by whom the design or right is
acquired ; and
(c) In any other case, means the author of the design ;
and where the property in, or the right to apply, the
design has devolved from the original proprietor upon
any other person, includes that other person :
“Working on a commercial scale” means the manufacture of
the article or the carrying on of the process described
and claimed in a specification for a patent in or by means
of a definite and substantial establishment or organisa-
tion, and on a scale which is adequate and reasonable
undSr all the oircum stances.
“The Comptroller* means the Comptroller General of Patents,
Designs and Trade Marks.
APPENDIX m
921
“Date of application” has the meaning assigned to it in
section four of this Act.
“Patent of addition” means a patent granted under the
provisions of section nineteen of this Act.
“The Appeal Tribunal” means the tribunal constituted under
the provisions of section 92A of this Act.
“The Statute of Monopolies” means the Act of the twenty-
first year of the reign of King James the First, chapter
. three, intituled “An Act concerning monopolies and
dispensations with penal laws and the forfeiture thereof”.
[Comparo Sec. 2 of the Indian Act for the definitions under the
Indian Act.]
Application to Scotland, Northern Ireland, and
the Isle of Man.
94. Application to Scotland. — In the application of this Act
to Scotland —
(1) In any action for infringement of a patent in Scotland
the provisions of this Act with respect to calling in the
aid of an assessor shall apply, and the action shall be
tried without a jury unless the court otherwise direct,
but otherwise nothing shall affect the jurisdiction and
forms of process of the courts in Scotland in such an
action or in any action or proceeding respecting a
patent hitherto competent to those courts ; and for the
purposes of the provisions so applied "court of appeal”
shall mean any court to which such action is appealed :
(2) Any offence under this Act declared to be punishable
on conviction under the Summary Jurisdiction Acts
may be prosecuted in the sheriff court :
(3) Proceedings for revocation of a patent shall be in the
form of an action of reduction at the instanoe of the
Lord Advocate, or at the instance of a party having
interest with his concurrence, which concurrence may
be given on just cause shown only, and service of all
writs and summonses in that aotion shall be made aooord-
116
922
THE LAW OF PATENTS IN INDIA
irig to the forms and practice existing at the commence-
ment of this Act :
(4) The provisions of this Act conferring a special juris-
diction on the court as defined by this Act shall not,
except so far as the jurisdiction extends, affect the
jurisdiction of any court in Scotland in any proceedings
relating to patents or to designs ; and with reference
to any such proceedings, the term "the Court” shall
mean any Lord Ordinary of the Cou.rt of Session, and
the term “Court of Appeal” shall mean either Division
of that Court :
(5) Notwithstanding anything in this Act, the expression
“the Court” shall in reference to proceedings in Scotland
for the extension of the term of a patent mean any Lord
Ordinary of the Court of Session :
(6) The expression "Rules of the Supreme Court” shall,
except in section ninety-two of this Act, mean act of
sederunt :
(7) - If any rectification of a register under this Act is re-
quired in pursuance of any proceeding in a court, a copy
of the order, decree, or other authority for the rectifica-
tion, shall be served on the comptroller, and he shall
reotify the register accordingly :
(8| The expression “injunction” means “interdict.”
95. Application to Northern Ireland.— -In the application of
this Act to Northern Ireland —
(1) All parties shall, notwithstanding anything in this Aot,
have in Northern Ireland their remedies under or in
respect of a patent as if the same had been granted to
extend to Northern Ireland only :
(2) The provisions of this Act conferring a special jurisdic-
tion on the court, as defined by this Act, shall not,
except so far as the jurisdiction extends, affect the
jurisdiction of any court in Northern Ireland in any
proceedings relating to patents or to designs ; and with
reference to any such proceedings the term "the court”
means the High Court in Northern Ireland :
APPENDIX III
(3) If any rectification of a register under this Act is re-
quired in pursuance of any proceeding in a court, a oopy
of the order, decree, or other authority for the rectifica-
tion shall be served on the comptroller, and he shall
rectify the register accordingly.
96. Isle of Man. — This Act shall extend to the Isle of Man,
subject to the following modifications : —
(1) Nothing in this Act shall affect, the jurisdiction of the
courts in the Isle of Man in proceedings for infringe-
ment, or in any action or proceeding respecting a patent
or design competent to those courts :
(2) The punishment for a misdemeanour under this Act in
the Isle of Man shall be imprisonment for any term not
exceeding two years, with or without hard labour, and
with or without a fine not exceeding one hundred
pounds, at the discretion of the court :
(3) Any offence under this Act committed in the Isle of
Man which would in England be punishable on summary
conviction may be prosecuted, and any fine in respect
thereof recovered, at the instance of any person aggri-
eved, in the manner in which offences punishable on
summary conviction may for the time being be prose-
cuted.
Repeal, Savings, and Short Title.
97. Saving for Prerogative. — Nothing in this Act shall take
away, abridge, or prejudicially affect the prerogative of the Crown
in relation to the granting of any letters patent or to the withholding
of a grant thereof.
[Sec. 79 of the Indian Act.]
98. Repeal and Savings. — (1) The enactments mentioned in
the Second Schedule to this Act are hereby repealed to the extent
speoified in the third column of that schedule —
(a) As respects the enactments mentioned in Part I of that
schedule, as from the commencement of this Act ;
(b) As respeots the enactments mentioned in Part II of that
schedule, as from the date when rules of the Supreme
THE LAW OF PATENTS IN INDIA
Court regulating the matters dealt with in those enact-
ments come into operation ;
(c) As respects the enactments mentioned in Part III of
that schedule, as from the date when rules under this
Act regulating the matters dealt with in those enact-
ments come into operation ;
and the enactments mentioned in Part II and Part III of that
schedule shall y until so repealed, have effect as if they formed part
of this Act :
Provided that this repeal shall not affect any convention,
Order in Council, rule, or table of fees having effect under any
enactment so repealed, but any such convention, Order in Council,
rule or table of fees in force at the commencement of this Act
shall continue in force, and may be repealed, altered, or amended,
as if it had been made under this Act.
(2) Except where otherwise expressly provided, this Act shall
extend to all patents granted and all designs registered before the
commencement of this Act, and to applications then pending, in
substitution for such enactments as would have applied thereto if
this Act had not been passed.
99. Short title and commencement. — This Act may be cited
as the Patents and Designs Act, 1907, and shall, save as otherwise
expressly provided, come into operation on the first day of January,
one thousand nine hundred and eight.
[Compare Sec. 1 of the Indian Act.]
APPENDIX III
925
SCHEDULES
Sect. 65. FIRST SCHEDULE
Fees on Instruments for. Obtaining Patents and Renewal.
(a) Up to sealing.
£ 8. d. £ s. d.
On application for provisional protection ... 10 0
On filing complete specification ... ... 4 0 0
5 0 0
or
On filing complete specification with first application ... 5 0 0
On the sealing of the patent in respect of investigation
as to anticipation ••• X 0 0
(b) Further before end of four years from date of patent
On certificate of renewal ... ... ... 50 0 0
(c) Further before end of eight years from date of patent
On certificate of renewal ... ... ... 100 0 0
Or in lieu of the fees of £50 and £100 the following annual fees :
annual fees ;
Before the expiration of the-
£
B.
d.
fourth year from the date of the patent
... 10
0
0
fifth „
II
II
11 •••
... 10
0
0
sixth „
99
11
II
... 10
0
0
seventh „
99
II
II •••
... 10
0
0
eighth „
99
II
11
... 15
0
0
ninth „
99
II
II •••
... 15
0
0
tenth „
99
91
19 • • •
... ‘ 20
0
0
eleventh
99
99
99 •••
... 20
0
0
twelfth
99
11*
19 • • •
... 20
0
0
thirteenth
ie
««
it •••
... 20
0
0
926
THE LAW OF PATENTS IN INDIA
SECOND SCHEDULE
Enactment Repealed
Part I.
Sec. 98
Session and Chapter
Short Title.
Extent of Repeal.
46 & 47 Viet. c. 67
The Patentsi Designs,
and Trade Marks Aot f
1888.
The whole Act, except
subsections (6), (6) and
(7) of section, 26, sec-
tion twenty-nine, sub-
sections (2) and (3) of
section forty-seven
and section forty-
eight.
48 * 49 Viet. c. 63
The Patents, Designs,
and Trade Marks
(Amendment) Act, 1886.
The whole Act.
49 & 60 Viet. c. 37
The Patents Act, 1886.
The whole Act.
61 & 62 Viet. c. 60
The Patentsi Designs,
and Trade Marks Act,
1888.
The whole Act.
1 Edw. 7, c. 18
The Patents Act, 1901.
The whole Act.
2 Edw. 7, c. 34
The Patents Act, 1902.
The whole Act.
7 Edw. 7, c. 28
\
The Patents & Designs
(Amendment) Act, 1907.
The whole Act.
8 Edw. 7, o. 4
The Patents, & Designs
Act, 1908.
The whole Act.
Part II.
46 * 47 Viet, c.67
The Patents, Designs
Trade Marks Act, 1883.
Subsection (6), (6) and
(7) of section twenty*
six and section
twenty-nine.
Part III.
46 * 47 Viot. o. 67 The Patents; Designs, Subsection (2) and (3)
and Trade Marks Act, of section forty-seven
1883. and section forty-
eight.
APPENDIX III
027.
NOTE
A Note concerning the English Statutes which preceded the
current English Act ot 1932.
The following are the References to certain English Patent
Statutes (operative only in the United Kingdom), which have
preceded and contributed to the English Patents and Designs Acts
1907-1932.
1. The Statute of Monopolies of 1623 : 21 Jac. 1. c. 3.
(See Appendix No. 1.)
2. The Patents and Designs Act, 1907 : 7 Edw. 7 c. 29 ( u An
Act to consolidate the enactments relating to Patents for Inventions
and the Registration of Designs and certain enactments relating to
Trade Marks”.) (28th August 1907.)
3. The Patents and Designs Act, 1914 : 4 <& 5 Oeo. 5. c. 18
( u An Act to amend section ninety-one of the Patents and Designs Act,
1907”.) (7th August 1914.)
(Note : This was for the sole purpose of inserting the words “ or
his legal representative or assignee >} in the said Section 91 : in view
of the Convention held in Washington in 1911.)
4. The Patents and Designs Act, 1919 \ 9 & 10 Oeo. 5 c. 80.
( u An Act to amend the Patents <fb Designs Acts”) (23rd December
1919.)
5. The Patents and Designs (Convention) Act, 1928 : 18 Oeo.
5. c. 3. ("An Act to make such amendments of the Patents and
Designs Acts 1907 and 1919 as are necessary to enable effect to be
given to a Convention for the Protection of Industrial Property”)
(28th March 1928).
6. The Patents and Designs Act 1933 : 22 <& 23 Oeo. 5. c. 32
( u An Act to amend the Patents and Designs Acts 1907 to 19287*)
(12th July 1932).
The dominant Statute of Monopolies above referred to has
co-existed side by side with all subsequent Patent legislation in the
United Kingdom.
THE LAW OF PATENTS IN INDIA
The effect of the remaining five statutes above-mentioned has
been embodied in the form of a consolidated act which (as expressly
authorised under Section 15 of the Patents and Designs Act, 1932)
may be conveniently referred to as the English Patents and Designs
Acts 1907-1932. The resultant text of this Act in this consolidated
form has been set out above from page 853. It is this consolidated
Act which (together with the Statute of Monopolies itself) contains
the current English statutory law regarding Patents.
REGISTER OF PATENT AGENTS RULES, 1832 .
Dated October 4, 1932.
(S. R. & O. 1932, No. 820.)
By virtue of the provisions of the Patents and Designs Acts, 1907 to 1932,
the Board of Trade do hereby make the following Rules: —
1. These Rules may be cited as the Register of Patent Agents Rules,
1932, and shall come into force on the 1st day of November, 1932.
2. Interpretation. — (1) 111 these Rules unless the context otherwise
requires, the expression —
“ the Acts *' means the Patents and Designs Acts, 1907 to 1932;
“the Board M means the Board of Trade;
“the Institute” means the Chartered Institute of Patent Agents;
“ the Register “ means the Register of Patent Agents kept under
the Acts and these Rules.
(2) The Interpretation Act, 1889, shall apply to the interpretation of
these Rules as it applies to the interpretation of an Act of Parliament.
3. Register. — The register shall be kept by the Institute, subject to the
provisions of these Rules and shall contain in one list all patent agents who
are registered under the Acts and these Rules.
such list shall be made out according to the surnames of the registered
persons, and shall also contain the full name of each registered person, with
his business address, the date of registration. his qualification
for registration, and a mention of any honours, memberships, or other additions
to the name of the registered person which the Council of the Institute may
consider worthy of mention in the register. The register shall be in the form
given in Appendix A, with such variations as may be required.
4. Printed copies to be published annually, end to be evldenoe of contents
of register. — The Institute shall cause a correct copy of the register, but with
the names arranged alphabetically, to be printed under their direction and
published and placed oil sale. Such correct copy shall be printed and published
not later than the end of the first week of March in each year. A copy of the
register for the time being purporting to be so printed and published shall be
admissible as evidence of all matters stated therein, aud the absence of the
name of any person from the register shall he evidence, until the contrary is
made to appear, that such person is not registered in pursuance of the Acts
or any Act repealed by the Acts.
5. Registrar. — The Council of the Institute shall continue in office or
appoint a Registrar, hereinafter referred to as the Registrar, who shall keep the
register in accordance with the provisions of the Acts and these Rules, and,
subject thereto, shall act under the directions of the Council of the Institute, or
the Board.
6. Final qualifying examinafion for registration.— No person shall be
entitled to be registered as a patent agent unless be has passed, and produces
or transmits to the Registrar a certificate under the seal of the Institute that
he has passed, such final examination as the Institute shall from time to time
prescribe.
7. Intermediate and final qualifying examinations to bo hold by the
Institute. — The Institute shall hold at least once in every year an intermediate
examination and a final qualifying examination, and the Institute shall, < subject
to these Rides, have the entire management and control of all such examinations,
and may from time to time make regulations with respect to all or any of the
following matters, that is to say,
(a) the subjects for and the mode of conducting the examination of
candidates;
117
930 THE LAW OF PATENTS IN INDIA
(6) the times and places of the examinations, and the notices to be
given of such examinations;
(c) the certificates, if any, to be given to persons of their having
passed the examinations;
(U) the appointment and removal of examiners, and the remuneration,
by fees or otherwise, of the examiners so appointed; and
(e) any other matter or thing as to which the Institute may think it
necessary to make regulations for the purpose of carrying out
this Rule.
8. Qualifications of persons for Intermediate examination.— Any person
must, iu order to be entitled to present himself for the intermediate examination,
be :
A British subject who has passed one of the preliminary examinations
which the Institute shall by regulation prescribe and lias been engaged for
three years as a pupil or technical assistant to one or more patent agents
practising in the United Kingdom; provided that (a) the Institute may by
regulation prescribe conditions under which such term of three years may be
reduced or dispensed with, and (b) any British subject for the time being
entitled to practise as a Solicitor of the Supreme Court of Judicature in England
or Northern Ireland or as a Law Agent before hhe Court of Session in Scotland
shall be entitled to present himself for the intermediate examination without
passing any of the preliminary examinations referred to above and without
having been engaged as a pupil or technical assistant to a registered patent
agent.
9. Qualifications of persona for final examination.— Any person must, in
order to be entitled to present himself for the final qualifying examination, be:
A British subject who has passed the intermediate examination prescribed
by Rule 7 and has been engaged for five years as a pupil or technical assistant to
one or more patent agents practising in the United Kingdom; provided that
(,«) the Institute may by regulation prescribe conditions under which such term of
five years may be reduced, and (b) any British subject for the time being entitled
to practise as a Solicitor of the Supreme Court of Judicature in England or
Northern Ireland, or as a Law Agent before the Court of Session in Scotland,
shall be entitled to present himself for the final qualifying examination if he
have passed the intermediate examination referred to in Rule 8.
10. Corrections of names and addressee in register— The Registrar shall
from time to time insert in the register any alteration which may come to his
knowledge in the name and address of any person registered.
11. Erasure of names of deceased persons.— The Registrar shall erase
from the register the name of any registered person who is dead.
12. Erasure of names of persons who have ceased to practise.— The Registrar
may erase from the register the name of any registered person who ha.v ceased
to practise as a patent agent, but not (save as hereinafter provided) without
the consent of that person. For the purposes of this Rule the Registrar may
send by post to a registered person to his registered address a notice inquiring
whether or not he has ceased to practise or has changed his residence, and if
the Registrar does not, within three months after sending the notice, receive an
answer thereto from the said person , he may, within fourteen days after the
expiration of the three months, send him by post to his registered uddress
another notice referring to the first notice, and stating that no answer has been
received by the Registrar; and if the Registrar, before the second notice is sent,
receives the first notice back from the dead letter office of the Postmaster-
General, or receives the second notice back from that office, or does not within
three months after sending the second notice, receive any answer thereto from
the said person, that person shall, for the purpose of this Rule, be deemed to
have ceased to practise, and his name may be erased accordingly: provided that
the name of a person erased from the register under this Rule may be restored
to the register by direction of the Institute if the Institute is of opinion that for
Any cause it is just so to direct.
APPENDIX III
931
13. Erasure of names for non-payment of fees. — If any registered person,
shall not, within one month from the day on which his annual registration fee
becomes payable, pay such fee, the Registrar may send to such registered
person to his registered address a notice requiring him, on or before a day
to be named in the notice, to pay his annual registration fee; and if such
registered person shall not within one month from the day named in such
notice pay the registration fee so due from him, the Registrar may erase his
name from the register: provided that the name of a person erased from the
register under this Rule may be restored to the register by direction of the
Institute on payment by such person of the fee or fees due from him, together
with such further sum of money, not exceeding in amount the annual registration
fee, as the Institute may in each particular case direct.
14. Registrar to aet on evidenee. — In the execution of his duties the
Registrar shall in each case act on such evidence as appears to him sufficient.
15. Erasure of ineorreet or fraudulent entries.— The Board may order
the Registrar to erase from the register any entry therein which is proved to
their satisfaction to have been incorrectly or fraudulently inserted.
16. Erasure of names of persons convicted of orlmes, end persons found
guilty of eonduet discreditable to a patent agent.— If any registered person shall
be convicted in His Majesty’s dominions or elsewhere of an offence which, if
committed in England, would be a felony or misdemeanour, or after due inquiry,
is proved to the satisfaction of the Board to have been guilty of conduct
discreditable to a patent agent, or having been entitled to practise as a Solicitor
or Law Agent shall have ceased to be so entitled, the Board may suspend such
person from acting as agent in respect of any business under the Acts for
such time as to the Board may seem fit or may order the Registrar tlo erase
from the register the name of such person : provided that no person shall be
adjudged by the Board to have been guilty of conduct discreditable to a patent
agent unless such person has received notice of, and had an opportunity of
defending himself from, any charge brought against him.
17. Restoration by Board of erased name.— Where the Board direct the
erasure from the register of the name of any person, or of any other matter,
the name of t he person or the matter shall not be again entered in the register,
except by order of the Board.
The Board may in any ca^ in which they think fit order the restoration
to the register of such name or matter erased therefrom either without fee, or on
payment of such fee, not exceeding the registration fee, as the Board may from
time to time fix, and the Registrar shall restore the name or matter accordingly.
18. inquiry by Board of Trade before erasure of name from register.—
For the purpose of exercising in any case their powers of erasing from and of
restoring to the register the name of a person, or any matter, the Board shall
appoint a committee consisting of such persons as they shall think fit. Every
application to the Board for the erasure from, or restoration to, the register
of the name of any person or any other matter shall be accompanied by a fully
detailed and documented statement in support and shall be referred for hearing
and inquiry to the committee, who shall report thereon to the Board, and the
report of the committee yliall be conclusive as to the facts for the purpose of
the exercise of the said powers by the Board.
The Registrar shall in all cases be entitled to be heard by the committee
who may also require the attendance before them of the complainant or the
party making the application.
It shall be the duty of the Institute to present all the relevant farts
to the committee unless the Board otherwise direct.
19. Restorttion by Institute of ortsod name. — The name of any person
erased from the register at the request or with the consent of such person shall,
unless it might, if not so erased, have been erased by order of the Board, he
restored to the register by the Registrar on his application and on payment
of such fee, not exceeding the registration fee, as the Institute shall from time
to time fix.
THE LAW OF PATENTS IN INDIA
20. Appeal to Board of Trade. — Any person aggrieved by any order,
direction, or refusal of the Institute or Registrar may appeal to the Board.
21. Notlee Of appeal. — A person who intends to appeal to the Board
under these Rules (in these Rules referred to as the appellant) shall, within
fourteen days from the date of the making or giving of the order, direction, or
refusal complained of, leave at the office of the Institute a notice in writing
signed by him of such his intention.
22. Cato on appeal. — The notice of intention to appeal shall be
accompanied by a statement in writing of the grounds of the appeal, and of the
case of the appellant in support thereof.
23. Transmission of notioe of appeal to Board of Tirade.— The appellant
shall also immediately after leaving his notice of appeal at the Institute send
by post a copy thereof with a copy of the appellant’s case in support thereof
addressed to the Comptroller, Industrial Property Department, Board of Trade,
25, Southampton Buildings, London, W.C. 2.
24. Diraotions as to hearing appeal. — The Board may thereupon give
such directions (if any) as they may think fit for the purpose of the hearing
of the appeal.
25. Notlee Of hearing Of appeal. — Seven days’ notice, or such shorter
notice as the Board may in any particular case direct, of the time and place
appointed for the hearing of the appeal shall be given to the appellant and the
Institute or the Registrar as the case may be.
26. Hearing and decision of eppesl. — The appeal may be heard and
decided by the Board, and such decision may be given or order made in
reference to the subject-matter of the appeal as the case may require.
27. Fees.— The fees set forth in Appendix B to these Rules shall be paid
in respect of the several matters, and at the times and in the matter therein
mentioned.
28. Alteration Of regulations. — Copies of all regulations made by the
Institute under these Rules shall, within twenty-eight days of the date of their
being made, be transmitted to the Board, and if, at any time, the Board by
an order signify their disapproval thereof, such regulation shall cease to be of
any force or effect.
29. Report to Board Of Trade. — -The Institute shall once every year in
the month of March transmit to the Board a report stating the number of
applications for registration which have been made in the preceding twelve
months, the nature and results of the examinations which have been held, and
the amount of ffes received by the Institute under these Rules, and such other
matters in relatibn to the provisions of these Rules as the Board may from
time to time require.
30. Repeal. — The Register of Patent Agents Rules, 1920, are hereby
repealed without prejudice to any tiling done under such Rules or to any
application or other matter pending thereunder at the date of the coming
into force of these Rules.
WALTER RUNCIMAN,
President of the Board of Trade.
Dated the 4th day of October, 1932.
[There is no Register of Patent Agents in India. Accordingly there are
in India no Rules corresponding to the above.]
APPENDIX III
933
APPENDIX A.
Form of Register.
APPENDIX B.
FEE8.
Nature of Fee.
When to be paid.
To whom to be paid.
Amount.
For registration of name
of patent agent.
On application and
before registration.
To the Registrar at
the Institute.
£ s. d.
5 6 0
Annual fee to he paid
by every registered
person.
On or before Novem-
ber 30th of each
year in respect of
the year commenc-
ing January 1st ;
following. ;
Do.
do.
3 3 0
On entry of a candidate
for the intermediate
examination.
At time of entering j
name.
i
Do.
do.
2 2 0
On entry of a candidate
for the final qualifying
examination.
Do. do. |
j
Do.
do.
3 3 0
Dated the 4th day of October, 1932.
WALTER RUNCIMAN,
President of the Board of Trade.
934
THE LAW OF PATENTS IN INDIA
PATENTS RULE8, 1932.
Dated October 25, 1932.
(S. R. & 0. 1932, No. 873.)
By virtue of the provisions of the Patents and Designs Acts, 1907 to 1932,
the Board of Trade do hereby make the following Rules: —
SHORT TITLE AND COMMENCEMENT.
1. Short title and commencement.— These Rules may be cited as the
Patents Rules, 1932, and shall come into force on the 1st day of November, 1932.
[Compare Rule 1 of the Indian Patents and Designs Rules, 1933: see
Appendix V below.]
INTERPRETATION.
2. Interpretation. — (1; In these Rules unless the context otherwise
requires :—
“ the Acts ” means the Patents and Designs Acts, 1907 to 1932;
“ the Board ” means the Board of Trade;
“ United Kingdom " includes the Isle of Man;
“ Foreign Application " means an application by any person for
protection of his invention in a Foreign State or any part of His
Majesty's dominions outside the United Kingdom to which by
any Order in Council for the time being in force the provisions of
Section 91 of the Acts are applicable;
“ Convention Application ” means an application in the United
Kingdom under Section 91 of the Acts;
“Office" means the Patent Office;
“Journal" means the Official Journal (Patents).
(2) The Interpretation Act, 1889, shall apply to the interpretation of
these Rules as it applies to the interpretation of an Act of Parliament.
[Compare Rule 2 of the Indian Patents and Designs Rules, 1933.]
FEES.
3. First Soiled ule. — The fees to be paid in relation to Patents shall be
those prescribed in the First Schedule to these Rules.
FORMS.
4. Sefiom^ and Third Sohedufcet. — The forms herein referred to are those
contained in the Second and Third Schedules to these Rules and such forms
shall be used in all cases to which they are applicable, and may be modified as
directed by the Comptroller to meet other cases.
[Compare Rule 6 of the Indian Patents and Designs Rules, 1933.]
DOCUMENTS.
5. Size, eto. f Of doouments. — All documents and copies of documents,
except drawings, sent to or left at the Office or otherwise furnished to the
Comptroller or to the Board shall be written, type-written, lithographed or
printed in the English language (unless otherwise directed) in large and legible
characters with deep permanent black ink upon strong wide-ruled white paper,
and except in the case of statutory declarations and affidavits, on one side only,
of a size of approximately 13 inches by 8 inches, leaving a margin of at least
one inch and a half on the left-hand part thereof, and the signatures thereto
must be written in a large and legible hand. Duplicate documents shall be left
at the Office, if required by the Comptroller. Such duplicates may be carbon
copies of the original documents provided they are on paper of good quality
and the typing is black and distinct.
At the top of the first page of a specification a space of about two inches
should be left blank.
[Compare Rule 7 of the Indian Patents and Designs Rules. 1933.]
APPENDIX III
935
6. Leaving and serving documents.— Any application, notice, or other
document authorized or. required to be left, made, or given at the Office, or to
the Comptroller, or to any other person under the Acts or these Rules, may
be sent by a prepaid letter through the post, and if so sent shall be deemed
to have been left, made, or given at the time when the letter containing the
same would be delivered in the ordinary course of post. In proving such
sending, it shall be sufficient to prove that the letter was properly addressed
and put into the post.
Any written communication addressed to a patentee at his address as it
appears on the register of patents or at his address for service or to any applicant
or opponent in any proceedings under the Acts or these Rules, at the address
appearing on the application or notice of opposition or given for service as
hereinafter provided shall be deemed to be properly addressed.
[Compare Rule 3 of the Indian Patents and Designs Rules, 1933.]
7. Address for sorviss. — Every applicant or opponent in any proceedings
to which these Rules relate, and every person who is or shall hereafter become a
S atentee, shall furnish to the Comptroller an address for service in the United
kingdom. Such address may be treated, for all purposes connected with such
proceedings or patent as the actual address of such applicant, opponent or
patentee.
If any patentee desires to have two addresses for service entered in the
register a request therefor shall he made on Patents Form No. 31 in respect of
each patent.
[Compare Rule 4 of the Indian Patents and Designs Rules, 1933.]
AGENCY.
8. Agency. — With the exception of the signing of the following documents,
namely, applications for patents, for a complete specification to be treated as
a provisional specification, for postdating of applications, for the revocation
of patents, for the grant of a licence under a patent, for the indorsement of a
patent “ licences of right,” for the refusal of a request for the indorsement of
a patent “ licences of right,” for the cancellation of such indorsement, for the
restoration of lapsed patents, requests for leave to amend applications or specifica-
tions, authorizations of agents, notices of oppositions, requests for issue of
duplicate letters patent, and surrenders of letters patent, all communications to
the Comptroller under the Acts and these Rules relating to patents may be
signed by and all attendances upon the Comptroller may he made by or through
ail agent duly authorized to the satisfaction of the Comptroller, and resident
or having a place of business in the United Kingdom, lit any particular case, the
Comptroller may, if lie think fit, require the personal signature or presence of
an applicant, opponent, or other person.
The Comptroller shall not be bound to recognise as such agent, or to receive
further communications in respect of any business under the Acts from, any
person whose name, by reason of his having been adjudged guilty of conduct
discreditable to a patent agent, has been erased from the register of patent
agents kept under the provisions of the Acts and not since restored, or (during
the term of his suspension) any person who has been suspended from acting as
a patent agent.
[Compare Rules 8 and 9 of the Indian Patents and Designs Rules, 1933. ]
APPLICATIONS FOR THE GRANT OF PATENTS.
9. Form of application. — An application for a patent, other than a Patent
of Addition or a Secret Patent, shall be made on one of the Patents Forms,
Nos. 1, 1A, 1R or IB* as the case may be. An application for a Patent of
Addition shall be made on Patents Forms Nos. 1C, 1C*, 1C**, 1C*+ or 1C***, and
an application for a Secret Patent on Patents Form No. ID. An application for
the grant of a Patent of Addition in lieu of an independent patent shall be made
on Patents Form No. 13B.
[Compare Rule 10 of the Indian Patents and Designs Rules, 1933.]
936
THE LAW OF PATENTS IN INDIA
10. Application by raproaontatlve of deceased Inventor.— In the case of
an application for a patent by the legal representative of a person who has died
possessed of an invention, the probate of the will, or the letters of administration
granted of the estate and effects, or an official copy of such probate or letters,
shall be produced at the Office in proof of the applicant’s title to be regarded
as legal representative and be supported by such further evidence as the
Comptroller may require.
[Compare Rule 10 of the Indian Patents and Designs Rules, 1933.]
11. Order of recording applications.— Applications for patents sent
through the post shall, as far as may be practicable, be opened and numbered
in the order in which the letters containing the same are delivered in the
ordinary course of post.
Applications left at the Office otherwise than through the post shall be
in like manner numbered in the order of their leceipt at the Office.
[Compare Rule 12 of the Indian Patents and Designs Rules, 1933.]
12. One invention. — (1) When a specification comprises several distinct
mutters, they shall not be deemed to constitute one invention by reason only that
they are all applicable to or may form parts of an existing machine, apparatus,
or process.
Application* for separate patents by way of amendment.— Where a person
making application for a patent has included in his specification more than one
invention, the Comptroller may require or allow him to amend such application
and specification and drawings or any of them so as to apply to one invention
only, and the applicant may make application for a separate patent for any
invention excluded by such amendment.
Every such lastmentioned application may, if the Comptroller at any time
so direct, bear the date of the original application, or such date between the
date of the original application and the date of the application in question,
as the Comptroller may direct, and shall otherwise be proceeded with as a
substantive application in the manner prescribed by the Acts and by these Rules.
Where the Comptroller has required or allowed any application or
specification or drawings or any of them to be amended as aforesaid, such
application shall, if the Comptroller at any time so direct, bear such date,
subsequent to the original date of the application and not later than the date
when the amendment was made, as the Comptroller shall consider reasonably
necessary to give sufficient time for the subsequent procedure relating to such
application.
(2) Where the sume applicant has put in two or more provisional speci-
fications for inventions which he believes to be cognate or modifications one
of the other Xnd the Comptroller is of opinion that such inventions are not
cognate or modifications one of the other, the applicant may divide the
complete specification left in connexion with his applications into such number
of complete specifications as may be necessary to enable the applications to be
proceeded with as two or more separate applications for patents for different
inventions.
[Compare Rule 10 of the Indiun Patents and Designs Rules, 1933.]
13. Claims. — The statement of the invention claimed, with which a
complete specification must end, shall be clear and succinct as well as separate
and distinct from the body of the specifications.
[Compare Rule 10 of the Indian Patents and Designs Rules, 1933.]
APPLICATIONS UNDER INTERNATIONAL AND COLONIAL
ARRANGEMENTS.
14. Convention application*.— Every Convention application shall contain
a declaration that a foreign application has been made for protection of the
invention to which such Convention application relates, and shall specify all
the Foreign States or parts of His Majesty’s dominions outside the United
Kingdom in which such foreign applications haye been made, and the official
date or dates thereof respectively. The application must be made within twelve
months from the date of the filing of the first foreign application, and must be
accompanied by a complete specification, and signed by the person by whom
such first foreign application was made or by his legal representative or assignee.
APPENDIX m
937
15. Foreign specification, ete. f to toeompany application. — In addition to
the specification left with every Convention application a copy or copies of the
specification or specifications and drawings or documents filed or deposited
by the applicant in the Patent Office of the Foreign State or part of His Majesty’s
dominions outside the United Kingdom in respect of the foreign application
or applications, duly certified by the official chief or head of the Patent Office
of such Foreign State or part of His Majesty’s dominions outside the United
Kingdom ns aforesaid, or otherwise verified to the satisfaction of the Comptroller,
must be left at the Office at the same time as the application or within such
further time thereafter not exceeding three months as the Comptroller may
allow. If any specification or other document relating to the application is in a
foreign language, a translation thereof shall be annexed thereto and verified
hy statutory declaration or otherwise to the satisfaction of the Comptroller.
An application for extension of time for leaving the copy or copies of
the foreign specification or specifications, translations, drawings or documents
shall he made on Patents Form No. 5.
16. Division of Convention applications. — Where the same applicant has
filed one complete specification in respect of the whole of the inventions in
respect of which two or more Convention applications have been made and the
Comptroller is of opinion that the whole of those inventions does not constitute
a single invention, the applicant may divide the complete specification into
such number of complete specifications as may be necessary to enable the
applications to be proceeded with as two or more separate Convention applications.
17. Proceedings. — Save as provided by Rule 94 all proceedings in connec-
tion with a Convention application shall he taken within the times and in the
manner prescribed by these Rules.
I Regarding Rules 14 17 above, compare Rule 11 of the Indian Patents
and Designs Rules, 1933. J
DRAWINGS.
18. General. — Drawings, when furnished, must accompany the provisional
or complete specification to which they refer, except in the case provided for
hy Rule 25. No drawing or sketch such as would require the preparation for
the printer of a special illustration for use in the letterpress of the specification
when printed may appear in the specification itself.
19. Requirements as to paper, etc.— Drawings must, be made on pure
white, hot-pressed, rolled, or calendered strong paper of smooth surface, good
quality, and medium thickness, without washes or colours, in such a way as to
admit, of being clearly reproduced on a reduced scale hy photography. Mounted
drawings may not be used.
20. Size of drawings and arrangement of figures.— Drawings must be on
sheets which measure 13 inches from top to bottom and are either from 8 inches
to 8* inches or from 16 inches to 16i inches wide, the narrower sheets being
preferable. A clear margin must he left half an inch from the edges of the sheet.
If there are more figures than can he shown on one of the smaller sized
-sheets, two or more of these sheets should ho used in preference to employing
the larger size. When an exceptionally large figure is required, it should be
continued on subsequent sheets. There is no limit to the number of sheets that
may be sent in, but no more sheets should be employed than are necessary
The figures should be numbered consecutively throughout and without regard
to the number of sheets. They should he separated bv a sufficient space to-
keep them distinct. ’
21. Drawings to be suitable for reproduotion. — Drawings must be prepared
in accordance with the following requirements : — 11
(a) They must be executed with absolutely black ink.
(b) Each line must be firmly and evenly drawn, sharply defined, and of
the same strength throughout,
(c) Section lines, lines for effect, and shading lines must he as few
as possible, and must not be closely drawn.
[ft) Shading lines must not contrast too much in thickness with th#
general lines of the drawing.
U8
038
THE LAW OP PATENTS IN INDIA
(e) Sections and shading must not be represented by solid black or
washes.
(/) They must be on a scale sufficiently large to show the invention
clearly, and only so much of the apparatus, machine, etc., may
appear as affects this purpose. If the scale is given, it must
be drawn, and not denoted by words. No dimensions may be
marked on the drawings.
(ff) The figure must be drawn in an upright position in regard to the
top and bottom of the sheet.
(//) Reference letters and numerals, and index letters and numerals
used in conjunction therewith, must be bold, distinct and not
less than one-eighth of an inch in height. The same letters
or numerals must be used in different views of the same
parts. Where the reference letters or numerals are shown
outside the figure, they must be connected with the parts
referred to by fine lines.
22. Drawings to bear name of applioant, eto., but no desoriptive matter. —
Drawings must bear the name of the applicant (and, in the case of drawings left
with a complete specification after one or more provisional specifications or
Convention applications, the numbers and years of the application) in the left-hand
top corner; the number of sheets of drawings sent and the consecutive number
of each sheet, in the right-hand top corner; and the signature of the applicant
or his agent in the right-hand bottom corner. Neither the title of the invention
nor any descriptive matter shall appear on the drawings.
23. Copies of drawings. — A facsimile or “ true copy ” of the original
drawings shall be filed at the same time as the original drawings, prepared
strictly in accordance with these Rules, except tnat the reference letters
or numerals and leading lines thereto should be in black-lead pencil. In the
case of a hand-made drawing this copy may be on tracing cloth. Where drawings
are filed in connexion with a Convention application a second “ true copy ” of the
original drawings must be filed.
Marking of originals and true copies.— The words “ original ” or " true
copy ” must in each case be marked at the right-hand top corner, under the
numbering of the sheet.
24. Condition of drawings on delivery.— -Drawings must be delivered at
the Office free from folds, breaks, or creases which would render them unsuitable
for reproduction by photography.
25. Provisional drawings used for eomplete specification.— If an applicant
desires to adopt the drawings lodged with his provisional specification as the
drawings or pqrt of the drawings for his complete specification, he shall refer
to them in the complete specification as those left with the provisional specification.
[Regarding Rules 18-25 above, compare Rules 15-18 of the Indian Patents
and Designs Rules, 1933.]
EXTENSION OF TIME FOR LEAVING COMPLETE SPECIFICATION.
26. Extension of time for leaving eomplete speoiftoatlon.— An application
for one month’s extension of time for leaving a complete specification shall be
made on Patents Form No. 6.
REQUEST FOR POSTDATING AN APPLICATION.
27. Request for postdating an application. — Where a person making
application for a patent desires in pursuance of the provisions of sub-section (4)
of Section 3 of the Acts before the acceptance of the complete specification
that his application should bo deemed to have been made oil a date within a
period of six months running from the date when the application was actually
made, he shall make application on Patents Form No. 4.
PROCEDURE UNDER SECTION 7 OF THE ACTS.
26. Provisional report in easo of oomplete anticipation.— When the
Examiner in prosecution of the investigation prescribed by sub-section (1) of
Section 7 of the Acts finds that the invention claimed in the specification under
examination has been wholly claimed or described in one or more specifications
referred to in the sub-section, he shall, without any further prosecution of the
investigation, make a provisional report to that effect,
APPENDIX HI
Tf the provisional report of the Examiner made under this Rule be not
reversed or altered, it may be deemed a final report, and the application shall
be dealt with as provided by sub-section (4) of the said Section. If, however,
such provisional report be reversed or altered, the investigation shall be continued,
and a further report shall be made, and the specification shall be dealt with as
provided in sub-section (3) or sub-section (4) of the said Section, as the case
may require.
29. Time for leaving emended speoifloatlon.—The time within which an
applicant may leave his amended specification under sub-secton (2) of Section 7
shall bo two months from the date of the letter informing him that the invention
claimed has been wholly or in part claimed or described in uuy specification
or specifications within the meaning of sub-section (1) of the said Section.
Application for an extension of time for leaving the amended specification
shall be made on Patents Form No. 7, but no such extension of time shall be
granted which would extend beyond the date prescribed by the Acts for the
acceptance of the specification, and any fees payable under these Rules for the
extension of time for acceptance of a specification shall be paid in addition to
the fees for an extension of time under this Rule.
30. Hearing by the Comptroller under sub-eeotion (4).— When the applicant
for a patent has been informed of the result of the investigation of the Examiner,
made under the provisions of sub-section (1) of Section 7, and the time allowed
for amendment of his specification has expired, the Comptroller, if he is not
satisfied that no objection exists to the specification on the ground that the
invention claimed therein has been wholly or in part claimed or described in a
previous specification referred to in that sub-section, shall inform the applicant
accordingly and appoint a time for hearing him, and shall give him ten days'
notice, at the least of such appointment. The applicant shall as soon as possible
notify the Comptroller whether or not he desires to be heard. The Comptroller
shall, after hearing the applicant, or without a hearing, if the applicant
has not attended a hearing appointed or lias notified that he does not desire to be
heard, determine whether reference ought to be made in the applicant’s specifica-
tion to any, and, if so, what prior specification or specifications by way of notice
to the public, and in the event of the invention claimed being wholly and specific-
ally claimed or wholly and specifically described in any specification to which
the investigation has extended, whether he should refuse to grant a patent, and
shall inform the applicant accordingly. As an alternative to the insertion of
a reference to a prior specification, the Comptroller may prescribe or permit
such amendments of the specification as will be to his satisfaction and, in such
case, the applicant must elect, within such time as may bo fixed by the Comp-
troller, whether he agrees to the amendments or to the insertion of a reference.
If no communication is received within the prescribed time or such further time
as may be allowed, the references will be inserted. Application for an extension
of the time fixed by the Comptroller under this Rule shall be made in the manner
prescribed in Rule 26.
31. Reference to prior specification. — When under sub-section (4) of
Section 7 the Comptroller determines that a reference to a prior specification
ought to be made by way of notice to the public, the form of reference shall
be as follows, and shall be inserted after the claims : —
Reference has been directed in pursuance of Section 7, sub-section (4) of
the Patents and Designs Acts, 1907 to 1932, to specification No. of 1
Where the reference is inserted as the result of a provisional report under
Rule 28, a statement to that effect shall be added to the reference.
32. The procedure to be followed when anticipating documents within
sub-section (5) of Section 7 are brought to the notice of the Comptroller shall
be that set out in Rules 28 to 31 with the necessary modifications.
PROCEDURE UNDER SECTION 8 OF THE ACTS.
33. Procedure under Section 8 . — Where on the additional investigation
provided for by Section 8 of the Acts it appears that the invention claimed in
any specification deposited pursuant to an application is wholly or in part
claimed in any published specification deposited pursuant to a prior application,
the applicant shall be informed of the result of such extended investigation, and
shall, within two months from the date of the letter so informing him, apply
mo tHE Law of paItents in iNdIa
for leave to amend his specification by way of disclaimer, stating specifically
what amendments he is prepared to make in it to remove the objection, or if lie
considers that no amendments are necessary, inform the Comptroller accordingly.
Application for an extension of time for making such an application shall
be made on Patents Form No. 7, but no such extension of time shall be granted
which would extend beyond the date prescribed by the Acts for the acceptance
of the specification, und any fees payable under these Rules for the extension
of time for acceptance of a specification shall be paid in addition to the fees for
an extension of time under this Rule.
The Comptroller shall consider any amendments submitted by the applicant
for this purpose, and may allow the necessary amendments to be made.
34. Hearing by Comptroller. — If, at the expiration of the said two months,
or such extended time as the Comptroller may allow, the Comptroller is not
satisfied that the invention claimed by the applicant is not wholly or in part
claimed in the specification or specifications cited, he shall inform the applicant
accordingly and appoint a time for hearing him, and shall give him ten days’
notice at the least of such appointment. The applicant shall as soon as possible
notify the Comptroller whether or not he desires to be heard. Ihe Comptroller
shall, after hearing the applicant or without a hearing, if the applicant has not
uttendeci a hearing appointed, or has notified that lie does not desire to be heard,
determine whether reference ought to be made in the applicant’s specification
to any, and if so, what prior specification or specifications by way of notice
to the public and shall inform the applicant accordingly. As an alternative to
the insertion of a reference to a prior specification, the Comptroller may prescribe
or permit such amendments of the specification as will be to his satisfaction and,
in such case, the applicant must elect, within such time as may be fixed by tho
Comptroller, whether he agrees to the amendments or to the insertion of a
reference. If no communication is received within the prescribed time or such
further time as may be allowed, the reference will be inserted. Application for
au extension of the time fixed by the Comptroller under this Rule shall be made
iu the manner prescribed in Rule 29.
35. Reference to prior specification. — When, under sub-section (2) the
Comptroller determines that reference to a prior specification ought to be made,
by way of notice to the public, the form of reference shall he as follows, and
shall be inserted after the claims: —
“Reference has been directed, iu pursuance of Section 8. sub-section (2),
of the Patents and Designs Acts, 1907 to 1932. to specification No. of 1 .“
36. Advertisement of amendments. — When, after any accepted specification
lias been published 1 , any amendment has been made, or any reference inserted
therein, under either of the last two preceding Rules, notice thereof shall be
advertised in t>he Journal.
DISCLOSURE OF RESULT OF SEARCH.
37. Disclosure of result of search.— Application under Section 68 of tho
Acts for disclosure of the result of a search made under Sections 7 and 8 of the
Acts shall be made on Patents Form No. 9.
CHEMICAL INVENTIONS.— TYPICAL SAMPLES AND SPECIMENS.
38. Ohemieal inventions.— Typical samples and specimens.— Where under
Section 2, sub-section (5), of the Acts, before the acceptance of the complete
specification left on any application for a patent for a chemical invention, the
Comptroller in any particular case considers it desirable to require or allow
typical samples or specimens to be furnished, such samples or specimens must,
if so required by the Comptroller, be supplied in duplicate.
A schedule specifying the nature of such samples or specimens may be
inserted in the complete specification or appended thereto.
The fact that such samples or specimens have been furnished shall also
be notified to the public by a statement to that effect at tiie head of the complete
specification and iu connexion with the advertisement of acceptance of such
specification iu the Journal.
APPENDIX hi
941
The samples or specimens must, unless other directions arc specially given,
be supplied in glass bottles of a total height not exceeding three inches, and
of an external diameter of lg inches, and the bottles must be securely closed
by well-fitting stoppers, and scaled. Each bottle must have an adhesive or
otherwise securely attached label bearing a description which clearly identifies
the sample with the substance described in the specification. Isabels which arc
not secured to the bottle by an adhesive should be 3 inches wide and not more
than 4 inches long.
Where samples or specimens of colouring matters are supplied, they
must unless otherwise directed by the Comptroller be accompanied by samples
or specimens of materials printed or dyed with such colouring matters; such
lastmentioned samples or specimens must be as flat as possible, and firmly
attached to curds 13 inches long by 8 inches broad. The cards must bear a full
description of the processes by which the respective dyed or printed effects were
produced, including the compositions and strengths of the various baths, the
temperatures, duration of treatment, degree of exhaustion of the dye* baths, in the
case of dyed fabrics the percentage of colouring matter fixed on, in the case
of prints the composition of the printing paste, and other necessary information.
This description must also clearly identify the substance used with that described
in the specification.
Samples of poisonous, corrosive, explosive, or easily inflammable substances
must be clearly marked as such.
ACCEPTANCE OF SPECIFICATIONS.
39. Extension of time for aoeepting complete specification. —An application
for extension of time for accepting a complete specification shall be made on
Patents Form No. 8.
40. Notice and advertisement of acceptance.— On the acceptance of a
provisional or complete specification the Comptroller shall give notice thereof
to the applicant, and shall advertise the acceptance of every complete specification
in the Journal.
[Compare Rule 19 of the Indian Patents and Designs Rules, 1933. J
41. Inspection of specification, etc. — After such acceptance in the case of
a complete specification the application and specification or specifications with
the drawings, foreign documents (if any) and samples or specimens (if any)
may be inspected at the Office upon payment of the fee prescribed by these Rules.
OPPOSITION TO GRANT OF PATENT.
42. Extension of period for leaving notice of opposition.— An application
made under sub-section (1) of Section 11 for an extension of the period within
which a notice of opposition may he filed shall he made upon Patents Form
No. 10A, and shall state the ground or grounds on which the application for
an exteusion of the said period is based.
43. Notioe of opposition.— Copy to applicant.— A notice of opposition to
the grant of a patent shall he given oil Patents Form No. 10, and shall state
the ground or grounds on which the person giving such notice (herein called the
opponent) intends to oppose the grant, and must be signed by him. Such notice
shall be accompanied by an unstamped copy thereof and a statement in duplicate
setting out fully the nature of the opponent’s interest, tiie facts upon which ho
bases his case and the relief which he seeks. A copy of the notice and of the
statement will he transmitted by the Comptroller to the applicant.
44. Counter-statement. —If the applicant is desirous of contesting the
opposition, he shall within fourteen days of the receipt of such copies, or such
further time as the Comptroller may allow, leave at the Office a counter-
statement fully setting out the grounds upon which the opposition is contested
and deliver to the opponent a copy thereof.
[Regarding Rules 43 and 44 above, compare Rule 21 of the Indian
Patents and Designs Rules, 1933.]
45. Opponent's evidence. — The opponent may within fourteen days from the
delivery of such copy, or within such further time as the Comptroller may allow,
leave at the Office evidence by way of statutory declaration in support of hie
case and, on so leaving, shall deliver to the applicant a copy thereof.
042
tHE LAW OF PATENTS IN INDIA
46. Applicant's evidence.— Evidence in reply.— Within fourteen days from
the delivery of such evidence to the applicant, or if the opponent does not leave
any evidence, within fourteen days from the expiration of the time within which
the opponent’s evidence might have been filed, or within such further time as the
Comptroller may in either case allow, the applicant may leave at the Office
evidence by way of statutory declarations in support of his case, and on so
leaving, shall deliver to the opponent a copy thereof ; and within fourteen days
from such delivery or within such further time as the Comptroller may allow, the
opponent may leave at the Office statutory declarations in reply and, on so
leaving, shall deliver to the applicant a copy thereof. Such lastmentioned
declarations shall be confined to matters strictly in reply.
47. Closing of evidence. — No further evidence shall be delivered by either
party except by leave, or on requisition, of the Comptroller.
48. Translations of doouments in foreign languages.— Where a document
in a foreign language is referred to in any statement or declaration filed in
connection with an opposition, au attested translation in duplicate shall be
furnished.
49. Hearing. — On completion of the evidence (if any), or at such other
time as he may see fit, the Comptroller shall appoint a time for the hearing
of the case, and shall give the parties ten days’ notice at the least of such
appointment. If either party does not desire to be heard he shall forthwith
notify the Comptroller to that effect. If either party desires to be heard he
must notify the Comptroller on Patents Form No. 11. The Comptroller may
refuse to hear either party who has not left Patents Form No. 11 prior to
the date of hearing. If either party intends to refer at the hearing to any
publication other .than a specification or publication already mentioned in the
proceedings, lie shall give to the other party and to the Comptroller five days’
notice at the least of his intention, together with details of each publication
to which he intends to refer. After hearing the party or parties desirous of
being heard or if neither party desires to be heard, then without a hearing,
the Comptroller shall decide the case and notify his decision to the parties.
[Compare Rule 22 of the Indian Patents and Designs Rules, 1933.]
50. Costs In unoontested oases. — In the event of an opposition being
uncontested by the applicant, the Comptroller in deciding whether costs should
be awarded to the opponent shall consider whether proceedings might have been
avoided if reasonable notice had been given by the opponent to the applicant
before the opposition was filed.
SEALING OF PATENT AND PAYMENT OF FEE.
51. Payment Of sealing fee. — If the applicant for a patent desires to havo
a patent sealed on his application, ho shall within the period allowed by Section
12 of tho Acts pay the sealing fee by leaving at the Office Patents Form' No. 12,
and paying thereon the prescribed fee.
52. Extension of time of sealing. — Where for any reason a patent cannot
bo sealed within tho period allowed by sub-section (4) (a), (b) or (c) of
Section 12 of the Acts, the applicant may apply to the Comptroller on Patents
Form No. 13 for an extension of such period not exceeding three months.
53. Further extension for proseouting applications abroad.— Where the
maximum extension of time for sealing a patent has been allowed under
sub-section 4 (e) of Section 12 and a further extension of time for sealing is
required under sub-section 4 (d) of that Section, application for such further
extension shall be made on Patents Form No. 13A. Such application shall be
made before the oxpiratiou of the extended period allowed under sub-section 4 (e).
[Regarding Rules 51-53 above, compare Rule 23 of the Indian Patents
and Designs Rules, 1933.]
54. Grant of patent to assignaa. — An application for the grant of a patent
to an assignee or to a joint applicant and assignee shall be made on Patents
Form No. IE, and shall be accompanied by an attested copy of the agreement
to assign. The original agreement shall also be produced for the Comptroller's
inspection. The Comptroller may call for such other proof of title or written
consent as he may require.
APPENDIX III
943
FORM OF PATENT.
55. Form Of patent.— A patent, except in the cases provided for in Rules
56 and 57, may be in the Form A, in the Third; Schedule to these Rules.
56. Form of patent of addition. — A patent of addition may be in the
Form B, in the Third Schedule to these Rules.
57. Form of patont to legal representatives of doeoaaed Inventor and
Others. — Where a patent is granted to the legal representatives of a deceased
inventor, or in any case in which the applicants have asked to be treated for
the purpose of the devolution not only of the legal but also of the beneficial
interest in such patent as joint tenants, the form of the patent shall be modified
so as to shew clearly that the persons to whom the grant is made are to be
treated for the purpose of the devolution not only of the legal but also of the
beneficial interest in the patent as joint tenants.
[Regarding Rules 55-57 above, compare Rule 24 of the Indian Patents
and Designs Rules, 1933.]
RENEWAL FEE8.
58. Renewal feet.— If a patentee intends, at the expirution of the fourth
year from the date of His patent or of any succeeding year during the term
of the patent, to keep the same in force, he shall before the expiration of such
year pay the prescribed annual renewal fee by lodging at the Office Patents
Form No. 14 and paying thereon the prescribed fee. The patentee may pay
all or any of such prescribed annual renewal fees in advance. An application
for an enlargement of time for payment of any fee under this Rule shall be
made oil Intents Form No. 15.
59. Certificate of payment of fee. — On due compliance with the terms of
Rule 58, the Comptroller shall issue a Certificate that the prescribed fee has
been duly paid.
60. Notice as to renewal feet. — At. any time not less than one month
before the date when any renewal fee will become due in respect of any
patent, the Comptroller shall send to the patentee or patentees, whose names
appear in the register of patents, at his or their address or addresses for
service, or to the address of the person or persons who paid the last renewal
fee, a notice reminding him or them of the date when such fee will become
due, and of the consequences of the non-payment thereof.
RESTORATION OF LAPSED PATENTS.
61. Restoration Of lapsed patents. — Where any patent has become void
owing to the failure of the patentee to pay any prescribed fee within the
prescribed time the patentee may apply to the Comptroller on Patents Form
No. 16 for an order for the restoration of the patent. Every such application
shall be accompanied by one or more statutory declarations verifying the
statements contained in such application. If the Comptroller entertains the
application, he shall advertise it in the Journal, and in such other manner as
in his opinion is desirable.
62. Opposition.— At any time within two months from the first of such
advertisements in the Journal any person may give notice of opposition aft the
Office on Patents Form No. 17. Such notice shall be accompanied by an
unstamped copy thereof and a statement in duplicate setting out fully the
nature of the opponent's interest, the facts upon which he bases his case and
the relief which lie seeks. A copy of the notice and of the statement will be
transmitted by the Comptroller to the applicant.
63. Further procedure. — Upon such notice of opposition being given and
a copy thereof transmitted to the applicant the provisions of Rules 44 to 50
shall apply to the case.
64. Hearing. — If no opposition to the application is entered the Comptroller
shall at the expiration of the opposition period appoint a time for hearing the
applicant and, if satisfied with the evidence adduced, issue an Order restoring
the patent,
044
THE LAW OF PATENTS IN INDIA
[Regarding Rules 61-64 above, compare Rules 26 and 27 of the Indian
Patents and Designs Rules, 1933.]
65. Order. — In every Order of the Comptroller restoring a patent, provi-
sions shall be inserted for the protection of persons who may have availed
themselves of the subject-matter of the patent after the patent lias been
announced ns void in the Journal. Such provisions shall restrain the patentee
from commencing or prosecuting any action or other proceeding, and from
recovering any damage: —
(1) In respect of any infringement of the patent which shall have taken
place after the date on which the patent was announced in the
Journal to be void and before the date of the Order.
(2) In respect of the use or employment at any time thereafter of any
mechanism, machine, machinery, process or operation actually
made or carried on within the United Kingdom or of the use,
purchase, or sale of any article manufactured or made in infringe-
ment of the patent after the date of the said announcement and
before the date of the Order. Provided that such use, purchase,
sale, or employment is by the person or corporation by or for
whom such machine or machinery or article was hona. fide
manufactured or made, or such mechanism, machine, machinery,
process or operation was hona fide made or earned on, his or
their executors, administrators, successors, or vendees or his
or their assigns, respectively.
(3) In respect of the use, employment, or sale at any lime thereafter
by any person or corporation entitled for the time being under
the preceding paragraph to use or employ any machine,
machinery, mechanism, process, or operation of any improved
or additional machine, machinery, mechanism, process, or
operation or of the use or sale of any article manufactured or
made by any of the means aforesaid in infringement (of ttfie
patent; provided that the use or employment of any such
improved or additional machine, machinery, mechanism, process
or operation shall be limited to the buildings, works or
premises existing at the time being or afterwards erected of the
person or corporation by or for whom such machine, machinery,
mechanism, process or operation was made or carried on within
the meaning of the preceding paragraph, his or their executors,
administrators, successors or assigns.
66. Compensation. — The Order shall further provide that if any person
within one year after the date thereof make an application to the Comptroller
for compensation in respect of money, time, or labour expended by the applicant
upon the subject-matter of the patent in the hona fide belief that such patent
had become and continued to be void, it shall he lawful for the Comptroller,
after hearing the parties concerned to assess the amount of such compensation
if in liis opinion the application ought to be granted, and to specify the party
by whom and the day on which such compensation shall be paid, and if
default shall be made in payment of the sum awarded, then the said patent
shall become void, but the sum awarded shall not in that case be recoverable
ns a debt or damages.
[Regarding Rules 65-66 above, compare Rule 28 of the Indian Patents
oml Designs Rules, 1933.]
AMENDMENT OF SPECIFICATION UNDER SECTION 21 OF THE ACTS.
67. Request for leave to emend. — A request to the Comptroller for leave
to amend an accepted specification, except when such request is made under
Rule 33 or 34, shall be made on Patents Form No. 18. The request must be
accompanied by a King's Printer’s or official copy of the original specification
and drawings, showing in red ink the proposed amendment in such manner as
to indicate clearly the alteration desired, and shall be advertised by publication
of the request and the nature of the proposed amendment in the Journal, and
in such other manner ns the Comptroller may in each case direct,
APPENDIX III
045
68. Notlee of opposition.— Copy for the opplloont. — A notice of
opposition to tlie amendment shall be given on Patents Form No. 19. Such
notice slmll be accompanied by an unstamped copy thereof and a statement in
duplicate setting out fully the nAture of the opponent’s interest, the facts upon
which he bases his case and the relief which lie seeks. A copy of the notice
and of the statement will be transmitted by the Comptroller to the applicant.
69. Furthor proceedings. — Upon such notice of opposition being given
and copy thereof transmitted to the applicant the provisions of Rules 44 to 50
shall apply to the case.
[Regarding Rules 67-69 above and Rules 72 and 73 below, compare
Rules 29-31 of the Indian Patents and Designs Rules, 1933.]
70. Requirements on amendment. — Where leave to amend is given the
applicant shall, if the Comptroller so require, and within a time to be limited
by him, leave at the Office a new specification and drawings as amended, to he
prepared in accordance with Rules 5 and 18 to 24.
71. Advartiaamant af amendment. — Particulars of all amendments of
specifications .allowed and made under Section 21 shall he advertised forthwith
by the Comptroller in the Journal.
[Regarding Rules 70 and 71 above, compare Rule 32 of the Indian Patents
ami Designs Rules, 1933.]
AMENDMENT OF APPLICATION OR SPECIFICATION BEFORE
ACCEPTANCE.
72. Request for leave to amand tpacifioatioit before acceptance. A request
for leave to amend a specification which has not. been accepted, other than
when such request is made under Rules 33 or 34, shall he made on Patents
Form No. 18A.
73. Request for leave to amand an applioatlon for a patent.- A request
for leave to amend an application for a patent shall he made on Patents Form
No. 18B.
| Regarding Rules 72 ami 73 above, also Rules 67 69 above, compare
Rules 29-31 of tin* Indian Patents amt Designs Rules, 1933. |
LICENCES OF RIGHT.
74. Request for findortement “ licences of right."— A request to the
Comptroller to indorse a patent with the words " licences of right *' shall he
made upon Patents Form No. 20. Such request shall he accompanied by a
statutory declaration and such other evidence as the Comptroller may deem
necessary to show that the patentee is not precluded by contract From making
such request.
75. Applioatlon for refusal af request. — Upon receipt of such request it
shall he advertised in the Journal .and any person alleging that such request
has been made contrary to some contract, in which he is interested, may apply
to the Comptroller upon Patents Form No. 21, within one month from the
date of the advertisement, for the refusal of the request or at any time after
indorsement for cancellation of the indorsement. Such application shall he
accompanied by an unstamped copy thereof and a statement in duplicate
setting out fully the nature of the applicant’s interest, the facts upon which
he bases his case, and the relief which he seeks, ami in the case of an application
for cancellation of the indorsement by Patents Form No. 14 with payment
thereon of the unpuid moiety of all renewal fees which have become due since
the indorsement. A copy of the application and of the statement will he
transmitted by the Comptroller to the patentee.
76. Further prooedure. — Upon such application being made and a copy
thereof transmitted to the patentee, the provisions of Rules 44 to 50 shall apply
to the case.
77. Applleetion to settle terms of lioenee.— An application to the
Comptroller for settlement of the terms of a licence under a patent which has
been indorsed " licences of right M shall he made upon Patents Form No. 22.
119
046
THE LAW OF PATENTS IN INDIA
Such application shall be accompanied by an unstamped copy thereof and a
statement in duplicate setting out fully the nature of the applicant’s interest,
the facts upon which he bases his case and the terms of the licence which he is
prepared to grant or accept. A copy of the application and of the statement
will be transmitted by the Comptroller to the patentee or the applicant
for the licence, as the case may be. Upon such application being made and a
copy thereof transmitted to the patentee or applicant for the licence, as the
case may be, the provisions of Rules 44 to 50 shall apply to the case with
the necessary modifications.
78. Application for cancellation of Indorsement.— An application by a
patentee for the cancellation of an indorsement under Section 24 of the Acts
shall be made upon Patents Form No. 23 and shall he advertised by the
Comptroller in the Journal and in such other manner, if any, as lie deems
desirable. Such application shall be accompanied by Patents Form No. 14 with
payment thereon of the unpaid moiety of all renewal fees which have become
due since the indorsement.
79. Opposition. — At any time within one month from the first of such
advertisements in the Journal any person may give notice of opposition at the
Office on Patents Form No. 24. Such notice shall be accompanied l>y an
unstamped copy thereof, and a statement- in duplicate setting out fully the
nature of the opponent’s interest, the facts upon which he bases his case, and
the relief which lie seeks. A copy of the. notice and of the statement will he
transmitted by the Comptroller to the patentee.
80. Further procedure. — Upon such notice of opposition being given and
a copy thereof transmitted to the patentee, the provisions of Rules 44 to 50
shall apply to the case.
PROCEDURE UNDER SECTION 26 OF THE ACTS.
81. Application under Seotion 26 of the Acts.— Copy for patentee.— An
application for the revocation of a patent under Section 26 of the Acts shall
he made on Patents Form No. 25. Such application shall he accompanied by
an unstamped copy thereof, and a statement in duplicate setting out fully the
nature of the applicant’s interest, the facts upon which he bases his case and
the relief which he seeks. A copy of the application and of the statement will
be transmitted by the Comptroller to the patentee.
82. Procedure. — Upon such application being made and a- copy thereof
transmitted to the patentee the provisions of Rules 44 to 50 shall apply to the
case.
83. Surrender Of patent. — (1) A notice of an offer by a patentee to
surrender his s patent under Section 26 of the Acts shall be given on Patents
Form No. 26, and shall he advertised by the Comptroller in the Journal ami
in such other manner as he deems desirable.
Notioe Of opposition. — (2) At any time within one month from the first
of such advertisements in the Jonnial any person may give notice of opposition
to the Comptroller on Patents Form No. 26A. Sucli notice shall be accompanied
biy an unstamped copy thereof and a statement in duplicate setting out fully
the nature of the opponent’s interest, the facts upon which he bases his case
and the relief which lie seeks. A copy of the notice and of the statement will
be transmitted by the Comptroller to the patentee.
Upon such notice of opposition being given and a copy thereof transmitted
to the patentee, the provisions of Rules 44 to 50 shall apply to the case.
| Compare Rule 33 of (lie Indian Patents and Designs Rules. 1933.]
PROCEDURE UNDER SECTION 27 OF THE ACTS.
84. Appliaation for compulsory licence or revocation of a patent.— An
application to the Comptroller for an Order under Section 27 of the Acts shall
he made on Patents Form No. 27 and shall set out fully the nature of the
applicant’s interest, the facts upon which he bases his case, and the relief
which lie seeks. The application shall be accompanied by statutory declarations
verifying the applicant’s interest and the facts set out in the application.
APPENDIX III
M7
85. Advertisement of application.-- Service of documents.— If the Comp-
troller upon consideration of the application decides that it may proceed, it
shall be advertised in the Journal and the applicant shall upon receipt of
directions from the Comptroller serve a copy of the application and of the
declarations upon the patentee and upon any other persons appearing from the
Register to be interested in the patent. The applicant must notify the
Comptroller when such service has been effected.
86. Counter-Statement. — The patentee or any person desirous of opposing
the application shall within fourteen days from the advertisement of the application
in the Journal, or such further time as the Comptroller may allow, deliver to
the Comptroller a counter-statement verified by statutory declaration fully
setting out the grounds on which the application is opposed. A copy of the
counter-statement and of the declaration or declarations shall within the same
time be delivered to the applicant by the opponent.
87. No further evidence shall be delivered by either party except- by
leave, or on requisition, of the Comptroller.
88. Application for hearing, — If any of the parties desire a hearing a
request therefor shall be made upon Patents Form No. 28 which must be left
at the Office within fourteen days from the date of the delivery of the counter-
statement and declaration.
89. Hearing. — Upon receipt of such request, the Comptroller shall appoint
a time for hearing the case, and shall give all the parties ten days’ notico at
the least of such appointment. Any party who does not desire to he heard shall
forthwith notify the Comptroller to that effect. Kvery person who desires to
be heard, except the person applying for the hearing must notify the Comptroller
on Patents Form No. 11 and tin* Comptroller may refuse to hear any person
who has not left Patents Form No. 11 prior to the date of the hearing. If
no application for a hearing has been received and tin* Comptroller is of opinion
that a hearing is necessary, he shall appoint a time for hearing the case and
proceed as though a request for hearing had been made under Rule 88. After
bearing the party or parties or without a hearing if no hearing is necessary,
the Comptroller shall decide the rase and notify his decision to the parties.
€0. Application by licensee to surrender a liceneo under Section 27 (3)
(•). — An application by an existing licensee, under a patent which has been
indorsed “lieences of rigid ” under tin* provisions of Section 27, sub section
(5) fa) of the Acts, for an Order of the Comptroller entitling the licensee, to
surrender his licence in exchange for a. licence to be settled by the Comptroller,
shall be made upon Patents Form No. 22 as provided in Rub* 77 and the
further proceedings thereon shall be regulated in aeeordanee with the provisions
contained in Rule 77.
PROCEDURE UNDER SECTION 37 OF THE ACTS.
91. Application for relief under Section 37 (2) . — An application made by
a co-patentee for relief under sub-section (2) of •Section 37 shall be made upon
Patents Form No. 40 and shall state the ground or grounds upon which such
application for relief is made, and upon any such application the Comptroller
may give such directions as to the procedure to be adopted as lie may think tit.
PATENTS FOR FOOD OR MEDICINE.
92. Patents for food or medicine. — An application to the Comptroller under
Section 38A(3) of the Acts for a licence to use an invention for the purpose of
the preparation or production of food or medicine shall he made on Pateuts
Form No. 29. The procedure to be followed shall be the same as that prescribed
in Rules 84 to 89 for an application under Section 27 of the Acts.
REGISTER OF PATENTS*
93. Entry of grant. — Upon the sealiug of a patent the Comptroller shall
cause to bo entered in the register of patents the name, address, and nationality
of the patentee as the grantee thereof, the title of the invention, the date of the
patent, and the date of the sealing thereof, together with the address for
service and such other particulars us the Comptroller may deem necessary.
[Compare Rule 49 of the Indian Patents and Designs Rules, 1933.1
948
THE LAW OF PATENTS IN INDIA
94. Entry in respect of Convention application.— The patent granted on
fitly Convention application h1iu.11 be entered in the register bearing the date
on which, the first foreign application was made, and the payment of renewal
fees, and the expiration of the patent, shall be reckoned as from the date of
the first foreign application. The date of the application in this country shall
also be .entered in the register.
[Compare Rule 50 of the Indian Patents and Designs Rules, 1933.]
. 95. Alteration of address. — If a patentee send to the Comptroller on
Patents Form No. 30 notice in respect of a patent of ail alteration in his name
or address or .address for service, the Comptroller shall cause the register to
be altered accordingly.
[Compare Rule 53 of the Indian Patents and Designs Rules, 1933.]
96. Application for entry of subsequent proprietorship.— Form and
Signature Of request. — Where a person becomes entitled by assignment, transinis'
sion, or other operation of law to a patent, or to any interest therein, as
mortgagee or licensee, application for the entry in tlie register of his name as
proprietor or part proprietor of the patent, or of a notice of such interest, as
the case may be, shall be made on Patents Form No. 32 or Patents Form No. 33,
as the case may be, and shall in the case of individuals be made and signed
by the person requiring to be registered as proprietor or part proprietor, or by
his ageut, and in the case of a body corporate by its duly authorised officer
or agent.
[Compare Rules 54 and 53 of the Indian Patents and Designs Rules, 1933. J
97. Produetloh of documents of title and other proof.— Every assignment
and every other document containing, giving effect to, or being evidence of,
I lie transmission of a patent or affecting the proprietorship thereof as claimed
by such application, except such documents as arc matters of record in the
Cnited Kingdom, shall, unless the Comptroller in his discretion otherwise directs,
b© produced to him together with the application, and he may call for such
other proof of title or written consent as he may require.
Ail official or certified copy of a document which is a matter of record
in the United Kingdom shall in like manner be produced to the Comptroller.
| Compare Rule 56 of the Indian Patents and Designs Rules, 1933.]
98. Copies for office. — The application shall be accompanied by an
attested copy of the assignment or other document required to be produced by
the preceding Rule.
99. Entry of notice of interest.— The notice of interest in a patent of
any person other than the proprietor or part proprietor entered in the register
in pursuuitc© of the application shall be such as may appear applicable to the
circumstances the particular case.
100. — Entry of notification of document. — Application for entry in the
register of notification of any document (not already provided for) purporting
to affect the proprietorship of a patent shall be made on Patents Form No. 34.
Such application shall be accompanied by an attested copy of the document,
the accuracy of such copy being certified as the Comptroller may direct, and
the original document shall at the same time be produced and left at the Office
if required for further verification.
. [Compute Rule 58 of the Indian Patents and Designs Rules, i933.]
101. Entry of dete of payment of fees on issue of certificate.— Upon the
issue of a certificate of payment under Rule 59 the Comptroller shull cause to
U* entered in the register a record of the date of payment of the fee oil such
certificate.
[Compare llule 51 of the Indian Patents and Designs Rules, 1933.]
102. Hours of inspection of register.— The register of patents shall be
open to the inspection of the public, on payment of the prescribed fee, on
every day on which the office is open to the public during the time it is so
open except at such, times when the use of the register may be required for
any official purpose.
[Compare Rule 59 of the Indian Patents and Designs Rules, 1933.]
APPENDIX III
CORRECTION OF CLERICAL ERRORS.
103. Correction of Clerioel errors.— A request for the correction of u clerical
error in or in connexion with an application for a patent, or in any patont or
specification, or in any mutter which is entered upon the register of patents,
shall he made on Patents Form No. 35.
In any case where the Comptroller requires notice of the nature of the
proposed correction to be advertised, such advertisement shall bo made by
publication of the request and the nature of the proposed correction in the
Journal, and in such other manner (if any) as the Comptroller may in each
case direct.
Any person rnay at any time within one month from the date of such
advertisement in the Journal give notice at the Patent Office of opposition to
the proposed correction.
Notice of opposition to the correction shall be made on Patents Form
No. 35A. Such notice shall be accompanied by an Unstamped copy thereof
and a statement in duplicate setting out fully the nature of the opponent's
interest, the facts on which he buses his case and the relief which he seeks.
A copy of the notice and of the statement will be transmitted by the Comptroller
to the applicant.
Upon such notice of opposition being given and a copy thereof transmitted
to the applicant, the provisions of Hules 44 to 50 shall apply to the case.
CERTIFICATES.
U04. Certificates end certified oopiec of documents.— A request for a
certificate of the Comptroller as to any entry, matter or thing which he is
authorised by the Acts or any of these Rules to make nr tin, shall he made
on Patents Form No. 36.
Certified copies of any entry in the register, nr certified copies of, nr
extracts from, patents, specifications, disclaimers, affidavit*, statutory declara-
tions, and other public documents in the Office, or of or from registers and other
books kept there, may be furnished by the Comptroller on payment of the fee
prescribed by these llules.
INFORMATION.
106. Requests for information. — A request made under Section 44A for
information upon a matter affecting a fiutent or an application for a patent shall
be made on Patents Form No. 36A, and may be in respect of any one of the
following matters:--
(") when a complete specification following a provisional specification
has been left or when art application for a patent has become
abandoned ;
[It) when a complete specification lias been accepted or when an appli-
cation for a patent has become void;
(r) when a patent lias been sealed or when the time for payment of
the sealing fee has expired ;
(r/) when a renewal fee has been paid;
(r) when a patent has expired;
(/') when an entry has been made on the register or application has
been made for the making of such entry; or
(f/) when any application is made or action taken involving an entry
on tho register or advertisement in the Journal.
. | Regarding Rules 104 and 105 above, compare Rule 63 of tin; Indian
Patents and Designs Rules, 1933. J
SECRET PATENTS.
106. Secret patents. — When it has been decided by the. Admiralty.
Secretary of State for War or the Secretary of State for Air that it is advisable
to take out a secret patent for any invention assigned under Section 30 of the
Acts, and an application for such patent has been made on Patents Form No. ID,
accompanied by a certificate of tho Admiralty or Secretary of State under
Section 30(3) of the Acts, the Comptroller shall not communicate the application
950
THE LAW OF PATENTS IN INDIA
or any documents relating tlieretu to any member of his staff other than a deputy
or special examiner or examiners, who shall make the required investigations
and reports required by the Acts to be made in the case of other applications
for patents.
Unless and until such invention is re-assigned to the inventor by the
Admiralty or Secretary of State —
(1) No copy of any specification or any other document or drawing
relating thereto shall in any manner whatever be published
or open to the inspection of the public.
(2) The application for the patent, and the acceptance of any
specification relating to the invention shall not be advertised,
nor shall the grant of the patent for such invention be open
to opposition under Section 11 of the Acts; but the Comptroller
shall cause a patent to be sealed in respect of every such
invention as soon as may be after the acceptance of the complete
specification relating thereto.
(3) Every such secret patent shall be registered in a confidential
register at the Office, and no details or particulars relating
thereto shall at any time he published as required by the Acts
for ordinary patents. Nor shall any cutry be made in the
ordinary register of patents in respect of any such patent or any
assignment thereof.
(4) No fees shall he payable in respect of any secret patent, and every
such patent, notwithstanding the non-payment of such fees,
shall temnin in force for the full period of sixteen years from its
•late.
107. Certificate of secrecy after application.— When an application lias
been made otherwise than as provided by the last preceding llule for a patent
for uu invention, and such application is still pending, ami a certificate under
Section 30(3) of the Acts is furnished to the Comptroller by the Admiralty or
Secretary of State, the provisions of such Rule shall, so far as is practicable,
having regard to the date of such certificate, apply to such application and to
all documents relating thereto.
108. Re-assignment. — 111 the event of ally secret patent being rc-assigned
to the inventor by the Admiralty or Secretary of State, it shall be removed from
the confidential register of secret patents; all fees that would have been there-
after payable if the same had not been a secret patent shall be paid in respect
thereof; and the patent shall remain in force only for the same term, and subject
to the same conditions as to payments of fees and otherwise as if it had not
been a secret patent.
y LOST PATENT.
109. Lost patent* An application for a duplicate of a patent which has
been lost or destroyed shall be made on Patents Form No. 37, and shall be
accompanied by a statutory declurafioit setting out in full and verifying the
circumstances in which the patent was lost or destroyed.
INDUSTRIAL OR INTERNATIONAL EXHIBITIONS.
110. Industrial or international Exhibitions.— Any person desirous of
exhibiting at an industrial or international exhibition an invention in respect
of which uu application for a patent has not been left at the Patent Office, or
of publishing any description of such invention during the period of the holding
of the exhibition, or of using such invention for the purpose of the
exhibition iu the place where the exhibition is held, may, after the
Hoard have issued a certificate that the exhibition is an industrial or
international one, give to the Comptroller notice on Patents Form No. 38 of his
intention to exhibit, publish, or use the invention, as the ease may be. For the
purpose of identifying the invention in the event of in' application for a patent
being subsequently made the inventor shall furnish to the Comptroller a brief
description of his invention, accompanied, if necessary, by drawings, and such
other information as the Comptroller may in each case require.
APPENDIX m
951
PUBLICATION OF INVENTIONS BEFORE LEARNED SOCIETIES.
111. Publication of inventions before learned societies.— Any person
desirous of publishing an invention in respect of which an application fur a.
patent has not been left at the Patent Office, by reading a paper before a learned
Society or of permitting publication of the paper in such Society's transactions
may give the Comptroller notice on Patents Form No. 38 of his intention to
publish such invention us provided in Rule 110.
EXERCISE OF DISCRETIONARY POWERS BY THE COMPTROLLER.
112. Exercise of diaerationary powers by Comptroller.— Notice of hearing.—
Before exercising any discretionary power given to tin* Comptroller by the Acts
or these Rules adversely to any person concerned, the Comptroller shall give ten
days' notice, or such longer notice as he may think fit, to such person of the
time when he may be heard personally or by his agent before the Comptroller.
113. Notioe by applicant. — Within five days from the date on which
such notice would be delivered in Die ordinary course of post, or such longer
time as the Comptroller may appoint ill such notice, the person concerned shall
notify in writing to the Cmupt roller whether or not lie intends to he heard upon
the matter.
[Regarding Rules 112 and 113 above, compare Rule 64 of the Indian
Patents and Designs Rules, 1933. |
114. Comptroller may require statement, etc.— Whether such person
desires to be heard or not, the Comptroller may at any time require him to
subnyt a statement in writing within a time to be notified by the Cornpt roller,
or to attend before him and make oral explanations with respect to such matters
as the Comptroller may require.
[Compare Rule 65 of the Indian Patents and Designs Rules. 1933.]
115. Decicion to be notified to pcrtiec. — The decision or determination
of the Comptroller in the exercise of any such discretionary power as aforesaid
shall be notified by him to all persons who appear to him to be affected thereby.
STATUTORY DECLARATIONS AND AFFIDAVITS.
116. Form, etc., of statutory declaration and affidavit.— 1 The statutory
declarations and affidavits required by these Rules, or used in any proceedings
i hereunder, shall be headed in the matter or matters to which they relate, and
shall be divided into paragraphs consecutively numbered, and each | si ra graph
shall so far as possible he confined to one subject. Every statutory declaration
or affidavit shall state the description and true place of abode of the person
making the same, ami shall he written, typed, lithographed or printed book wise
and shall bear the name and address of the person leaving it ami shall state on
whose behalf it is left.
117. Manner in which, and persons before whom, declaration or affidavit
it to bo taken. — The statutory decln rations ami affidavits required b\ the Acts and
these Rules, or used in any proceedings thereunder, shall he made ami subscribed
as follows:—
U<) In the United Kingdom, before any justice, of Hie peace, or any
commissioner or other officer authorized by law in any par!
of the United Kingdom to administer an oath for the purpose of
any legal proceeding ;
(//) In any other part of His Majesty’s dominions, befoie any com!,
judge, justice of the peace, or any officer authorized by law to
administer an oath there for the purpose of a legal proceeding;
and
(/■) If made out of His Majesty’s dominions, before a British Minister,
or person exercising the functions of a British Minister or a
Consul. Vice-Consul, or other person exercising the functions
of a British Consul, or before a notary public, or before n
judge or magistrate.
GENERAL.
118. Power Of amendment, etc.- If the Comptroller think fd any document
for the amending of which no special provision is made by I he Acts may bs
THE LAW OF PATENTS IN INDIA
amended, and any irregularity in procedure may be rectified, on such terms as
the Comptroller may direct if in the opinion of the Comptroller such amendment
or rectification can be made without detriment to the interests of any person.
[Compare Rule 66 of the Indian Patents and Designs Rules, 1933.]
119. General power to enlarge time, — -The times prescribed by these Rules
for doing any act, or taking any proceeding thereunder, other than the times
prescribed by Rules 15, 52 and 58, may be enlarged by the Comptroller if he
thinks fit, upon such notice to other parties, and proceedings thereon, and upon
such terms, as he may direct.
[Compare Rule 67 of the Indian Patents and Designs Rules, 1933.]
120. Days end hours of business.— 1 The Office shall be open to the public
every weekday except Saturday between the hours of ten and four, and on
Saturday between the hours of ten and one, except on the days following: —
Christmas Day, Good Friday, the days observed as days of public
fast or thanksgiving, or ns holidays at the Rank of England, and days
which mny from time to time he notified by a placard posted in a
conspicuous place at the Office.
121. Exeluded days.— Whenever the lust day fixed by the Acts, or by
these Rules, for doing anything shall full on a day when the Office is not open
or on u Saturday, which days shall he excluded days for the purposes of the
Acts and these Rules, it shall be lawful to do any such thing on the day next
following such excluded day, or days if two or more of them occur consecutively.
122. Power to diepeuee with evidenee, signature, etc.— Where, under
these Rules, any person is required to do any act or thing, or to sign any
document, or to make any declaration on behalf of himself or of any body
corporate, or any document or evidence is required 1 to be produced to or left
with the Comptroller, or at the. Office, and it is shown to the satisfaction of the
Comptroller that from any reasonable cause such person is unable to do such
act or thing, or to sign such document, or to make such declaration, or that
such document or evidence cannot be produced or left as aforesaid, it shall be
lawful for the Comptroller, upon the production of such other evidence, and
subject, to such terms as he may think fit. to dispense with any such act or
tiling, signature, declaration, document, or evidence.
APPLICATIONS TO AND ORDERS OF COURT.
123. Applications to Court. — Four clear days’ notice of every application
to the Court under Section 72 of the Acts for rectification of the register of
patents shall he given to the Comptroller.
Ordtrs 0f v Court. — Where any Order has been made by the Court, under
the Acts revoking a patent or extending the term of a patent, or. allowing
a patentee to amend his specification or affecting the validity or proprietorship
of a patent or any rights thereunder, the person in whose favour such Order has
been made shall forthwith serve on the Comptroller an office copy of such
Order together with Patents Form No. 39. The specification shall thereupon be
amended or (ho register rectified or altered as the case may be.
REPEAL.
124. Repeal.— The Patents Rules, 1920, are hereby repealed, without
prejudice to anything done under such Rules, or to any application or other
matter pending thereunder at the date of the coming into force of these Rules.
[Compare Rule 68 of the Indian Patents and Designs Rules, 1933.]
Dated this 25th day of October, 1932.
WALTER RUNCIMAN,
President of the Board of Trade.
APPENDIX III 963
THE FIRST SCHEDULE.
List of Fees payable in respect of the grant of Patents and of other
matters with relation thereto.
1
2
4
6
7
£ s. d.
On application accompanied by provisional
specification .. . . 10 0
On filing complete specification thereafter 4 0 0
On application accompanied by complete
specification 5 0 0
On request for t lie post-dating of an applies*
t ion under sub-sect ion (4) of Section 3: -
Not exceeding one month
2
0
0
v « two months
4
0
0
three months
6
0
0
,, four ninnt hs
{{
0
0
five moutiis
10
0
0
six months
12
0
0
For
extension of time under Rule 15:
Not exceeding one mont h
2
0
0
,, two months
4
0
0
,, three months
6
0
0
For
extension of time for leaving complete
specification not exceeding one month . . |
2
0
0
For extension of time for leaving amended
specification under Rule 29 or 35 or noti
tying acceptance of alternative under
Rule 30 or 34 : —
Not exceeding one month .. 0 10 0
Kaclt succeeding month .. .. 0 10 0
For extension of time for acceptance of j .
complete specification : —
Not exceeding one month . . .. 2 0 0
Corresponding
Form
Patents Forms
Nos. 1 or 1A,
etc.
Patents Form
No. 3.
Patents Forms
Nos. 1 or 1A,
etc., and 3.
Patents Form
No. 4.
Patents Form
No. 5.
Patents Form
No. 6.
Patents Form
No. 7.
it »
Patents Form
No. A.
two months .. 4 0 0
three months .. 6 0 0
120
964
THE LAW OF PATENTS IN INDIA
£ s. d.
9 On application for result of a search under
Sections 7 and 8 . . . . . . 10 0
10 On notice of opposition to grant of patent.
By opponent . . . . . . 10 0
10A On application for extension of time for
filing notice of opposition to grant of
patent .. .. .. .. 10 0
11 On hearing by Comptroller. By applicant
and by opponent, respectively .. 2 0 0
12 On notice of desire to have patent sealed .. 10 0
12A Application under Section 12(1) (h) for
grant of patent to an assignee . . 10 0
13 On application for extension of time for
sealing of patent other than extension
under sub section 4(d) of Section 12: —
Not exceeding one month . . .. 2 0 0
„ „ two months .. 4 0 0
,i ,, three months .. 6 0 0
13A On application for extension of time for
sealing of patent under sub-section 4(d)
of Section 12 : —
Not exceeding one month . . ... 2 0 0
Each succeeding month . . . . 2 0 0
13 B On application for grant of Patent of Addi-
tion in lieu of an independent patent . , 5 0 0
On application for certificate of renewal
14* Before the expiration of the 4th year from
the date of the patent and in respect of
the 5th year . . . . . . 5 0 0
15* Before the expiration of the 5th year from
the date of the patent and in respect of
the 6th year . . . . . . 6 0 0
Corresponding
Form
Patents Form
No. 9.
Patents Form
No. 10.
Patents Form
No. 10A.
Patents Form
No. 11.
Patents Form
No. 12.
PatentR Form
No. IE.
Patents Form
No. 13.
a tt
ft 1 1
Patents Form
No. 13 A.
tt tt
Patents Form
No. 13B.
Patents Form
No. 14.
a tt
APPENDIX 111
065
16* Before the expiration of the 6th year from
the date of the patent, and in respect of
the 7th year
£ s. d.
7 0 0
Corresponding
Form
Patents Korin
17* Before the expiration of the 7th year from
the date of the patent and in respect of
the 8th year
8 0 0
No. 14.
>> i>
18* Before the expiration of the 8th year from
the date of the patent and in respect of
the 9th year
9 0 0
19* Before the expiration of the 9th year from
the date of the patent and in respect of
the 10th year
10 0 0
• » ft
20* Before the expiration of the 10th year from
the date of the patent and in respect of
the 11th year
11 0 0
ft It
21* Before the expiration of the 11th year from
the date of the patent and in respect of
the 12th year
12 0 0
ft >>
22* Before the expiration of the 12th year from
the date of the patent and in respect of
the 13th year
13 0 0
ft ft
23* Before the expiration of the 13th year from
the date of the patent and in respect of
the 14th year
14 0 0
• t i*
24* Before the expiration of the 14th year from
the date of the patent and in respect of
the 15th year
15 0 0
If >»
25* Before the expiration of the 15lh year from
the date of the patent and in respect of
the 16th year
16 0 0
ft 11
26 On enlargement of time for payment of
renewal fees -
Not exceeding one month . .
2 0 0
Patents Korin
„ „ two months
4 0 0
No. 15.
ii ii
,, ,, three months
6 0 0
*t tt
27 On application for restoration of a lapsed
patent
20 0 0
Patents Form
No. 16.
28 On notice of opposition to application for
restoration of lapsed patent . .
1 0 0
Patents Form
No. 17.
* One moiety only of these fees payable on Patents indorsed “ Licences of
Right.”
956
THE LAW OF PATENTS IN INDIA
£ s. d.
29 On hearing by Comptroller. By applicant
and by opponent, respectively 2 0 0
30 On application to amend specification after
acceptance: —
Up to sealing. By applicant I 10 0
After sealing. By patentee .. 3 0 0
30 A On application to amend specification not
yef accepted 1 10 0
30H On application to amend an application for
a patent . . . . . . 1 10 0
31 On notice of opposition to amendment. By
opponent l 0 0
32 On hearing by Comptroller. By applicant
and by opponent , respectively . . ... 2 0 0
33 On request for indorsement of patent
“ Licences of Right ” .. 10 0
34 On application for refusal of request for
indorsement of patent “ Licences of
Right ” or cancellation of indorsement 2 0 0
35 On bearing by Comptroller. By each part y 2 0 0
36 On application for settlement of teims of
44 Licences of Right " . . . . 5 0 0
37 On hearing by Comptroller. By each party 2 0 0
38 On application by patentee for cancellation
of indorsement of a patent 44 Licences of
Right " . . 2 0 0
39 On notice of opposition to cancellation of
indorsement of a patent “ Licences of
Right” 2 0 0
40 On hearing by Comptroller. By each party 2 0 0
41 On application for revocation of a patent
under “Sect ion 26 . . . . . . 2 0 0
42 On hearing by Comptroller. By applicant
and by patentee, respectively . . . . 2 0 0
43 On offer to surrender a patent under
Section 26 . . 10 0
43A On notice of opposition to surrender a patent 10 0
Corresponding
F orm
Patents Form
No. 11.
Patents Form
No. 18.
Patents Form
No. 18A.
Patents Form
No. 18B.
Patents Form
No. 19.
Patents Form
No. 11.
Patents Form
No. 20.
Patents Form
No. 21.
Patents Form
No. 11.
Patents Form
No. 22.
Patents Form
No. 11.
Patents Form
No. 23.
Patents Form
No. 24.
Patents Form
No. 11.
Patents Form
No. 25.
Patents Form
No. 11.
Patents Form
No. 26.
Patents Form
No. 26 A.
APPENDIX III
957
44
45
46
47
48
49
50
51
52
55
On hearing by Comptroller. By applicant
and by opponent, respectively. .
On application for grant of compulsory
licence or revocation of a patent under
Section 27
On request for hearing under Section 27(101
On hearing by Comptroller. My each party
On application for licence under Section
58A (3)
On hearing by Comptroller. By each party
Pur altering name or address or address for
service in register, for each patent
For entry of two addresses for service in
register, for each patent
On application for entry of name of subse-
quent proprietor in the register of patents,
if made within six months from date of
aequisit ion of proprietorship: —
In respec t of one patent
For each additional patent, thedevoiu
tion of title being the same as in the
first pater. I
On applic ation for entry of name of suhse
quent proprietor in the register of patents,
if made after expiration of six months from
date of acquisition of proprietorship:—*
In respect of one patent
For each additional patent, the devolu-
tion of title being tiie same as in the
first pa* ent
On application for entry of not ice of a mort
gage of licence in the register of patents,
if made within six months from date of
acquisition of interest or the sealing of the
patent
In respect of one patent
For each additional patent, the devolu
tion of title being the same as in the
first patent
!
£ s. d.
Corresponding
Form
Patents Form
No. 11.
Pat mits Form
No. 27.
Patents Form
No. 28.
Patents Form
No. 11.
Patents Form
No. 29.
Patents Form
No. 11.
Patents Form
No. 50.
Patents Form
No. 31.
Patents Form
No. 52.
Patents Form
No. 53.
958
THE LAW OF PATENTS IN INDIA
55 On application for entry of notice of a mort-
gage or licence in the register of patents,
if made after expiration of six months from
date of acquisition of interest or the
sealing of the patent : —
£ 8. d.
Corresponding
Form
In respect of one patent
For each additional patent, the devolu-
tion of title being the same as in the
10 0 0
Patents Form
No. 33.
first patent
56 Oil application for entry of notification of a
document in the register of patents, if
made within six months from date of
document or the sealing of the patent : —
0 2 6
In respect of one patent
For each additional patent referred
to in the same document as the first
1 0 0
Patents Form
No. 34.
patent
57 On application for entry of notification of a
document in the register of patents, if
made after expiration of six months front
date of document or the sealing of the
patent
0 2 6
» jj
In respect of one patent
For qjftch additional patent referred to
in the same document as the first-
10 0 0
Patents Form
No. 34.
patent
58 On request to Comptroller to correct n
clerical ^rror : —
0 2 6
a * t
Up to sealing ..
0 10 0
Patents Form
No. 35.
After sealing ..
58A On notice of opposition to the correction of a
1 0 0
f? •»
clerical error
1 0 0
Patents Form
No. 35 A.
5811 Oil hearing by Comptroller. By each party
59 For Certificate of Comptroller under Section
2 0 0
Patents Form
No. 11.
78 . . . . . .
59 A On request for information as to a matter
affecting a patent or nil application there-
0 10 0
Patents Form
No. 36.
for . . . . . . • .
0 10 0
Patents Form
No. 36 A.
APPENDIX III
959
Corresponding
Form
£
s.
d.
60
For duplicate of patent
2
0
0
Patents Form
No. 37.
61
On notice to Comptroller of intended exhi-
bit ion or publication of an invention
under Section 45 . .
1
0
0
Patents Form
No. 38.
62
On notice of order of Court for amendment
of specification or rectification of register
0
10
0
Patents Form
No. 39.
62A
On application under Section 37 (2) for
directions ns to saIc or lease of a patent |
or grant of licence . .
5
0
0
Patents Form
No. 40.
62B
On hearing by Comptroller. Tly each
party . . * . .
2
0
0 |
Patents Form
No. 11.
63
On inspection of register, original docu-
ments, convention documents and samples
or specimens
0
1
0
64
For typewritten office copies -every 100
words (but never less than one shilling)
0
0
6
65
For photographic office copies and office
copies of drawings, cost according to
agreement
.
. . .
j
66
For office copy of patent
0
4
6
67
For certifying office copies, MSS, printed
or photographic . . each
0
2
6
Da tod this 25th day of October, 1932.
WALTER RITNUIMAN,
President of the Hoard of Trail**.
We sanction the above fees.
AUSTIN HUDSON,
WALTER.). W0MER8LEY.
Lords Commissioners of
1 1 is Majesty's Treasury.
960
THE LAW OF PATENTS IN INDIA
THE 8EC0ND 8CHEDULE.
Forms
Corresponding Fee
Patents Form No. 1
Application for Patent
£1
a
No. 1A ..
Application for Patent communi-
cated from abroad
£1
: f
No. in ..
Application for Patent under Inter-
national and Colonial Arrange-
ments
£1
a
No. in* ..
Application for Patent by Legal
Representatives or Assignees
under International and Colonial
Anangements
£1
it
No. 1C . .
Application for Patent of Addition
£1
ft
No. 1C* . .
Application for Patent of Addition
under International and Colonial
Arrangements
£1
f>
No. 1C**
Application for Patent of Addition
for Imention communicated from
abroad
£1
f>
No. lC*f
Application for Patent of Addition
by Legal Representatives of
Assignees under International
and Colonial Arrangements
£1
ft
No. 1C***
Application for Patent of Addition
to a Patent of Addition
£1
if
No. in ..
Application for Secret Patent
tt
No. IF. ..
Application for Crant of Patent to
an Assignee
£!
ft
No. 2 . .
Provisional Specification
tt
No. 3 . .
Complete Specification
£4
t>
No. 4
Request for post-dating of applica-
tion
Fee
item 4
tt
No, 5
Application for extension of Time
under Rule 15
£2,
£4, or £6
tt
No. 6 . .
Application for extension of Time
for leaving Complete Specifica-
tion
£2
it
No. 7
i
Application for extension of Time
for leaving as amended Specifica-
tion under Rule 29 or 33 or
notifying acceptance of alterna-
tive offered under Rule 30 or 34
Fee
item 7.
APPENDIX HI
961
Forms
Corresponding Fee
Patents Form No. 8
Application for extension of Time
for acceptance of Complete Speci-
fication
£2. £4. oi- £6
» No. 9
Application for the result of a
search made under Sections 7
and 8
£1
,, No. 10 ..
Notice of Opposition to Grant of
Patent
£1
„ No. 10\ . .
Application for extension of Time
for filing Notice of Opposition
to Grant of Patent ..
£1
.. No. 11 ..
Notice that hearing before the
Comptroller will he attended ..
£2
No. 12 . .
Notice of Desire to have Patent
sealed
j £1
No. IS ..
Application for extension of Time
for the sealing of a Patent other
than extension under sub-section
(4) (d) of Section 12
to
to
to
s?
No. 13A ..
Application for extension of Time
for the sealing of a Patent under
sub-section (4) (d) of Section 12
£2 per mont li
No. 1311..
Application for the grant of a Patent
of Addition in lieu of an indepen
dent Patent
£5
No. 14 ..
Application for Certificate of
Payment of Renewal Fee
Fee items 14 to 25
„ No. 15 ..
Application for enlargement of Time
for Payment of Itrnewal Fee
i
£2, £4, or £h
No. 16 , ,
Applicat ion for t lie restoral ion of a j
lapsed Patent . . j
£20
No. 17 ..
Opposition to application for res !
(oration of a lapsed Patent .. |
£1
No. JH . .
Application for Amendment of Spe ;
cification after acceptance .. j
£1 10s. ? or £5
, f No. 18 A ..
Application for Amendment of |
Specification not yet accepted .. \
£1 1 Os.
„ No. 18H . .
Application for Amendment of an
application for a Patent
£1 10s.
,, No. 19
Opposition to Amendment of Speci-
fication
£1
121
062
THE LAW OF PATENTS IN INDIA
Korins
Corresponding Fee
Patents Form No. 20 . .
Request for indorsement of Patent
“ Licences of Right ”
£1
» No. 21 . .
Application for refusal of request for
indorsement of Patent ‘‘Licences
of Right” or cancellation of in-
dorsement.
£2
,, No. 22
Application for settlement of terms
of Licence under Patent indorsed
“Licences of Right”
£5
No. 2.5 ..
Application by patentee for cancel-
lation of indorsement of a Patent
“ Licences of Right ”
£2
.. No. 24 . .
Opposition to cancellation of in-
dorsement of a Patent “ Licences
of Right ”
£2
No. 25 ..
Application for Revocation of a
Patent under Section 26
£2
No. 26
Offer to surrender a Patent
£1
No. 26 A ..
Opposition to surrender a Patent . .
£1
No. 27
Application for ( Irani of Compulsory
Licence or Revocation of a Patent
under .Sect ion 27
£5
,, No. 2ii
Request for hearing under Section 27
(10) .. ... . ..
£2
.. No. 29
Application for Licence under Sec-
tion 38A (3)
£5
It No. 30
\
Request for Alteration of Name or
Address or Address for Service in
Register ..
5s.
N».3I ..
Request to enter two Addresses for
Service in R egistcr . .
5s.
No. 32 ..
Application for entry of name of
proprietor in Register
Fee items 52 & 53
No. 33 ..
Application for entry of Notice of
Mortgage or Licence in Register
Fee items 54 & 55
,, No. 34 ..
Application for entry of Notifica-
tion of Document in Register . .
Fee items 56 & 57
„ No. 35 . .
Request for Correction of Clerical
Error . .
10s. , or £1
,, No. 35 A . .
Notice of Opposition to Correction
of Clerical Error
£1
APPENDIX III
963
Forms
Corresponding
Fee
Patents Form No. 36 . .
Request for Certificate of Comptroller
10 s.
„ No. 36A..
Request for information as to a
matter affecting a Patent or an
application thereof
10 s.
„ No. 37 ..
Application for Duplicate of Patent
£2
„ No. 38 ..
Notice of Intended Exhibition or
Publication of Unpatented Inven-
tion
£1
„ No. 39 . .
Application for Entry of Order of
Court
10 s.
„ No. 40 . .
Application under Section 37 (2)
for directions as to sale or lease
of a Patent or Uiunt of Licence . .
£5
[ N.B . — The model English Patents Forms referred to above, which are used only
in Ihe United Kingdom for business at the English Patent. Office, have been omitted
from this Appendix.]
THE THIRD SCHEDULE.
[ N.R. -T/iia* Schedule consists of Bonn A, being Ihe English Bonn of Bolen I in
use in the United Kingdom for Ihe gran! of o Patent in on ordinary cose, and of Bonn
B, being Ihe English Bonn of Potent in use in Ihe United Kingdom for Ihe grant of
o Potent of Addition. Sec Rules 55 to 57 above. The first-mentioned Bonn is
worded in the same manner us that set out in full at page above and fully
discussed in Chapter // above,]
WALTER RUNCIMAN,
Piesident of the Hoard of Trude.
Datel this 25th day of October. 193?.
964
THE LAW OF PATENTS IN INDIA
PATENT8 APPEAL TRIBUNAL FEES ORDER, 1932.
Dated October 26, 1932.
(8. U. & O. 1932, No. 874.)
The Lord Chancellor, the Judges of the Supreme Court, and the Treasury,
in pursuance of the powers and authorities vested in them respectively, by
Section 92A of the Patents and Designs Act, 1907, Section 213 of the Supreme
Court of Judicature (Consolidation) Act, 1925, and Sections 2 and 3 of the
Public Offices Fees Act, 1879, do hereby, according as the provisions of the
above-mentioned enactments respectively authorize and require them, make,
advise, consent to, and concur in. the following Order: —
1. A fee of £3 shall be taken upon the filing of every notice of appeal
to the Appeal Tribunal constituted under Section 92A of the Patents and
Designs Act, 1907.
2. Where it appears to the Lord Chancellor that the payment of the fee
prescribed by this Order would, owing to the exceptional circumstances of the
particular case, involve hardship, the Lord Chancellor may, with the concurrence
of the Treasury, reduce or remit the fee in that particular case.
3. The fee prescribed by this Order shall he taken by a judicature fee
stamp impressed on the notice of appeal.
4. The Interpretation Act, 1889, shall apply for the purposes of this
Order as if it were an Act of Parliament.
5. This Order may he cited as the Patents Appeal Tribunal Fees Order,
1932. and shall come into operation on the 1st day of November. 1932.
SANKEY, C.
HEW ART, C. J.,
HAN WORTH, M. R.
FAIRFAX UTXMOORF.
Lords Commissioners of I AUSTIN HUDSON.
His Majesty’s Treasury, i WALTER J. WOMERSLEY.
Dated the 26t li day «>f October, 1932.
APPENDIX III
965
PATENT8 APPEAL TRIBUNAL RULES, 1932.
Dated October 31, 1932.
(S. R. & O. 1932, No. 887.)
I, the Honourable Arthur Fairfax Charles Corydon Lux mo ore, Knight, the
Judge of the High Court nominated by the Lord Chancellor to be the Appeal
Tribunal constituted under Section 92 A of the Patents and Designs Act, 1907,
do, by virtue of Section 92A(3)(b) of the Act and all other powers enabling
nu* in this behalf, hereby make the following Hides: —
1. When any person intends to appeal to the Appeal Tribunul from a
decision of the Comptroller in any case in which such appeal is given by the
Act, he shall within fourteen days from the date of the decision appealed against
file in the Registry. Patents Appeal Tribunal, Royal Courts of Justice, a notice in
the appropriate form set out in the Schedule hereto.
2. The notice shall state the nature of the decision appealed against and
whether the appeal is from the whole, or part only, and if so, what part, of
the decision.
3. A copy of the notice of appeal shall he sent by the appellant to the
Comptroller; and, when there has been an opposition, or a dispute under
Section 12 or an application under Section 49 or under Section 58 of the Act,
to the opposite party or parties also.
4. Upon notice of appeal being filed, the Comptroller shall forthwith
transmit to the Registry, Patents Appeal Tribunal, all the papers relating to
the matter in respect of which the appeal is made.
5. No appeal shall he entertained of which notice is not given within
fourteen days from the date of tin* decision appealed against, or such further
time as the Comptroller may allow (upon request received before the expiration
of the said fourteen days), except by special leave upon application to the
Appeal Tribunal.
6. Seven days’ notice, at least, of the time and place appointed for the
hearing of any appeal shall be given by the Registrar, Patents Appeal Tribunal,
unless special leave lie given by the Appeal Tribunal that any shorter notice
may he given.
7. Such notice shall in all cases be given to the Comptroller and the
appellant and all other necessary parties.
8. The evidence used on appeal by the Appeal Tribunal shall he the same
as that used before the Comptroller; and no further- evidence shall he given,
except with the leave of the Appeal Tribunal upon application for that purpose.
9. The Appeal Tribunal may, at the request of any party, order the
attendance at the hearing cm appeal, for the purpose of being cross-examined, of
any person who has made a declaration in the matter to which the appeal
relates.
10. Any person requiring the attendance of a witness for cross-examination
shall tender to the witness whose attendance is required a reasonable sum for
conduct money.
11. The Appeal Tribunal may, upon awarding costs, either fix the amount
thereof or direct by whom and in what manner the amount of such costs shall
he ascertained.
12. If any costs awarded be not paid within fourteen days after the
amount thereof has been so fixed or ascertained, or such shorter period as shall
he directed by the Appeal Tribunal, the party to whom such costs are to be
paid may apply to the Appeal Tribunal for an order for payment under the
provisions of Section 92A(3)(c) of the Act.
13. All documentary evidence required, or allowed by the Appeal Tribunal
to be filed, shall be subject to the same regulations in all respects, as apply to the
procedure before the Comptroller, and shall be • filed in the records of the
Appeal Tribunal.
14. Any notice or other document required to be given to the Registrar.
Patents Appeal Tribunal, under these Rules, may he sent by a prepaid letter
through the post.
15. Where, prior to the 1st day of November. 1922. either a notice of
intention to appeal tn the law officer has been filed and served in accordance
966 THE LAW OF PATENTS IN INDIA
with the law officer’s Rules dated 11th December, 1907, or a petition has been
presented and served in accordance with Order UIIA Rule 5 (a) of the Rules
of the Supreme Court by way of appeal to the Court under Section 49 or 58 of
the Act, the requirements of Rules 1, 2, 3 and 5 hereof shall be deemed to
have been satisfied.
16. The Interpretation Act, 1889, shall apply for the purposes of these
Rules as if they were an Act of Parliament.
17. These Rules shall come into force on the 1st day of November, 1932.
and may be cited as the Patents Appeal Tribunal Rules, 1932.
FAIRFAX LUXMOORE.
Dated the 31st day of October, 1932.
SCHEDULE.
(Forms of Notice of Appeal to Appeal Tribunal.)
[There is in India no provision for the existence of any Patents Appeal
Tribunal, such as is indicated above. There being no such Patents Appeal
Tribunal, there are accordingly no corresponding Rules.]
APPENDIX III
m
ORDER LIMA.
Prsestfur* in Actions for infringements tf Patents and undar the Patents and
Designs Asts, iS07 to 193*.
1. In this Order: —
“ The principal Act " means the Patents and Designs Act, 1907 as
amended.
“ The Comptroller ’’ means the Comptroller-General of Patents,
Designs and Trade Marks.
“ The Court ” includes the Judge of the High Court for the time being
selected by the Lord Chancellor as the Court for the purpose of
hearing appeals and petitions under the principal Act.
2. The Rules of the Supreme Court for the time being in force shall apply,
$>o far as may be practicable (unless by the principal Act or by these Rules other-
wise expressly provided), to all proceedings before the Court under the principal
Act. In particular, if the Court is for the time being a Judge of the Chancery
Division, the provisions of Order V, Rule 9, shall apply to all such proceedings,
as being business assigned to the Court within the meaning of that Rule.
3. In the case of petitions for extension of the term of a patent under
Scctiou 18 of the principal Act, the following provisions shall apply: —
(tt) A party intending to apply by petition shall give public notice
by advertising three times in the ” London Gazette,’' and once
at least in a London daily newspaper.
(b) If the applicant's principal place of business is situated ill the
United Kingdom at a distance of 15 miles or more from Churing
Cross he shall also adveitise once at least in some local news
paper published or circulating in the town or district where such
place of business is situated. If the applicant has no such place
of business, then if ho carries oil the manufacture of any thing
made under his specification in the United Kingdom at a distance
of 15 miles or more from Charing Cross he shall advertise once
at least in some local newspaper published or circulating in the
town or district where he carries on such manufacture. If lie
has no such place of business and carries on no such manufacture
in the United Kingdom, then if he resides in the United Kingdom
at a distance of 50 miles or more from Charing Cross he shall
advertise once at least in some newspaper published or circulating
in the town or district where he resides.
(c) The applicant shall in his advertisements state the object of his
petition and shall give notice of the day (which if the Court is
for the time being a Judge of the Chancery Division shall be an
ordinary petition day) on which he intends to apply to the Court
for a day to be fixed before which the petition shall not be in
. the paper for hearing (hereinafter called “the appointed day”),
which first mentioned day shall not be less than four weeks from
the date of the publication of the last of the advertisements to
be inserted in the “ lamdon Gazette." Every such advertisement
shall state an address within the United Kingdom for service oil
the applicant of any document requiring service under this Rule.
He shall also give notices of objection which must be lodged as
hereinafter provided before such day so named in the said
advertisements. A copy of such advertisement shall be forward-
ed by the applicant to the Solicitor to the Hoard of Trade at
the same time as the first advertisement is sent to the “ London
Gazette ” and the Solicitor to the Board of Trade shall thereupon
cause such advertisement to be inserted iii the three following
issues of the Official Journal (Patents).
(r/) The petition shall name the Comptroller us a respondent and must
be presented within one week from the publication of the last of
the advertisements required to be published in the “ London
Gazette " and a copy of the petition must within the same time
be served 1 on the Solicitor to the Board of Trade. Such petition
shall be made returnable for the day named in the advertisements.
THE LAW OF PATENTS IN INDIA
(?) Tiie petition must be accompanied by an affidavit or affidavits of
advertisements having been published by the petitioner according
to the requirements of paragraphs {a ) , (b) and (c) , hereof. The
statements contained in such affidavit or affidavits may be
disputed upon the hearing.
(f) Upon the day named in the advertisements the petition shall appear
in the Court List, and the petitioner shall apply to the Court to
fix the appointed day.
(if) The petitioners shall forthwith after the appointed day has been
fixed give public notice of the same by advertising once at least
in the “ London Gazette.”
(A) A party presenting a petition must lodge as hereinafter provided
a copy thereof with two printed copies of the specification of his
patent.
( i) The petitioner shall also lodge as hereinafter provided not less than
three weeks before the appointed day two copies of the balance
sheet of expenditure and receipts relating to the patent in question
which accounts are to be proved on oath before the Court at the
hearing. He shall also at the same time furnish two printed
copies of the specification and of the said balance sheet to the
Solicitor to the Board of Trade, and shall upon receiving two
days’ notice give the Solicitor to the Board of Trade or any
person deputed by him for the purpose reasonable facilities for
inspecting and taking extracts from the books of account by
reference to which he proposes to verify the said balance sheet
or from which the materials for making up the said balance
sheet have been derived.
(j) An y person desirous of opposing the prayer of the petition shall
lodge as hereinafter provided a notice that lie intends so
to oppose and giving an address in the United Kingdom for
service of any document requiring service under this Rule.
Such person shall at the same time serve upon the petitioner
and upon the Solicitor to the Board of Trade a copy of such
notice. Such notices shall he respectively lodged and served
before the day named in the petitioner’s advertisements as that
on which lie intends to apply to the Court for the appointed
day to be fixed.
(/*) The petitioner shall forthwith upon receipt of such notice serve
a copy of his petition upon each person giving such notice.
(/) Every person giving such notice as aforesaid shall within three
weeks after service of the petition upon him lodge as hereinafter
V provided two copies and serve upon the petitioner one copy and
lodge with the Solicitor to the Board of Trade three copies in
writing of particulars of the objections upon which he intends
to rely against the granting of the prayer of the petition.
(//>) Any person who shall not within the said three weeks lodge and
serve such particulars of objections as aforesaid shall be deemed
to have abandoned his opposition.
(a) No person who Iihs delivered such particulars of objections shall
be entitled to oppose the granting of the prayer of the petition
on any grounds not stated in such particulars.
(o) Any person who has lodged notice that he intends to oppose the
granting of the prayer of the petition shall be entitled to be
heard on the application to fix the appointed day, and every
person who has lodged and served particulars of objection
shall be served by the petitioner with notice of the appointed
day.
(ft) The petition shall not be entered in the list for trial until the
expiration of the time limited for the lodging and service
of the particulars of objections, and shall only be entered for
trial on the lodging of an affidavit on behalf of the petitioner
that all persons who have served him with notice of intention
to oppose the prayer of his petition have been served with
Al'l’KNLilX HI
969
copies of tlic petition. The petition .shall, if am] so Ion# am
the Court is a Judge of the Chancery Division and subject to
any direction of the Court to the contrary he set down in the
same manner as if it had been a witness action assigned to that
Judge and shall be marked in the witness list not before the
of 19 being the appointed day.
( 7 ) Any persons who have delivered particulars of objections shall
be entitled, at their own expense, to obtain from the petitioner
copies of the accounts which have been lodged by him.
(/ a ) All petitions, documents, and copies by this Rule required to
be lodged shall if and so long as the Court is a Judge of the
Chancery Division be lodged at the Chambers of the Judge,
and subject as aforesaid shall he lodged with such person
and at such place as the Court may from time to time direct.
(s) The Court may excuse petitioners and opponents from compliance
with any of the requirements of this Rule and may give such
directions in matters of procedure and practice as it shall
consider to he just and expedient.
(/) The Comptroller if he elects or is directed to appear on the
question of granting the prayer of any petition shall not he
required to give notice of the grounds of any objection he may
think fit to take or of any evidence which he may think fit
to place before the Court.
(*/) 'The Court may in cases where opposition has been entered to the
prayer of a petition give costs to or against such opponents.
(r) In the event of the Court refusing the prayer of the. petition
the Court shall not except under special circumstances give
more than one set of costs amongst all the opponents.
(u?) Revoked by It. S. C. (No. 2) 1933.
(.r) Service of any document requiring service under this Rule may
be made by enclosing sueli document in a prepaid registered
letter and posting sueli letter to tbc person required to be
served at his address for service.
(r/) The originating summons fur the extension of any Letters Patent
uiiiler Section 18(6) of the principal Art shall be intituled
in the Matter of the Patents and Designs Arts, J907 to 1932,
and in the Matter of the Letters Patent in question and shall
name the Comptroller as a respondent and shall he served 011
the Solicitor to the Hoard of Trade and shall so long as
the Court is a Judge of the Chancery Division he marked with
the name of that Judge.
[ft) At least Beven days before the duy 011 which the originating
summons is returnable the applicant shall file and serve 011 the
Solicitor to the Hoard of Trade an affidavit stating all material
facts on which the applicant relies. Such affidavit shall in
particular Mtate facts sufficient to show the district or districts
wherein advertisements of the intended hearing of the summons
should appear.
(r) O 11 the return of the summons or on any adjournment thereof
caused by the insufficiency of the applicant’s evidence to comply
with the requirements aforesaid or otherwise directions shall
be given for public advertisement of the application which
shall include unless the Judge in Chambers shall otherwise
specially direct at least one advertisement in the “London Gazette”
and one advertisement either in some London daily newspaper
if the applicant’s principal place of business in the United
Kingdom is situated within 15 miles of Charing Cross or if
such principal place of business in the United Kingdom is
outside that distance then in some local newspaper published or
circulating in the town or district in which such place of
business is situated. And thereupon the summons shall be
adjourned to a day (hereinafter called the appointed day) not
THE LAW OF PATENTS IN INDIA
being less than lour weeks from the estimated date of the
forthcoming appearance of the advertisement in the “ London
Gazette. **
(<I) The form of advertisement shall be approved by the Judge in
Chambers and shall state the object of the application and
name the day fixed as the appointed day. Every such
advertisement shull also state an address for service on the
applicant of any document requiring service under this Rule
and shall also give notice that notices of objection must be
lodged aH hereinafter provided at least seven days before the
appointed day. A copy of such advertisement shall be served
by the applicant on the Solicitor to the Board of Trade at
the same time that the advertisement is sent to the “ London
Gazette ” and the Solicitor to the Board of Trade shall thereupon
cause such advertisement to be inserted in the two following
issues of the Official Journal (Patents).
(/') Except with the leave of the Judge in Chambers no affidavit
shall bo filed by the applicant between the appearance of his
advertisement in the “ London Gazette M as aforesaid and the
appointed day other than an affidavit or affidavits to
prove compliance with the directions given as to advertisement.
(/) Any person desirous of opposing the relief sought by the
originating summons shall at least seven days before the appointed
day lodge at the Chambers of the Judge a notice stating that
lie intends so to oppose and giving an address within the United
Kingdom for service of any document requiring service under
this Rule. Such person shall at the same time serve upon the
applicant and upon the Solicitor to the Board of Trade a copy
of such notice. After lodgment of such notice the opponent
shall be entitled to be supplied on the usual terms with copies
of the originating summons and of any affidavit filed by the
applicant in support.
(</) Upon the appointed day and oil any adjournment directions shall
bo given for the delivery by any opponent of particulars of
objection and for the filing of any affidavits and the matter
shall in general proceed and be heard and dealt with in the
like manner as an originating summons in the Chancery
Division in which the applicant is plaintiff and the Comproller
and any opponents are defendants.
(/<) The Court may excuse applicants and opponents from compliance
with any of the requirements of these Rules and may give such
v \ directions in matters of procedure and practice as it shall
consider to be just and expedient.
(i) The Comptroller if he elects or is directed to appear upon the
question of the relief sought by the originating summons shall
not he required to give notice of the grounds of any objection
he may think fit to take or of any evidence he may think fit to
place before the Court.
(j) The Court may in eases where opposition has been entered to
the relief sought by the originating summons give costs to or
against the opponents.
(k) In the event of the Court refusing the relief sought by the
originating summons the Court shall not except unde)’ special
circumstances give more than one set of costs amongst all the
opponents.
(/) Revoked by R. S. C. (No. 2), 1933.
(w) Service of any document requiring service under Ibis Rule may
be made by enclosing such document in a prepaid registered
letter and posting such letter to the person required to be
served at his address for service.
(w) In the event of any person desiring to obtain relief under
'Section 18(6) of the principal Act together with relief under
sub-section (1) of that Section it shall not be necessary for him
APPENDIX in
971
to take out a separate originating summons but he shall be at
liberty, to make a combined application by a petition. And in
that event his application shall conform to and be regulated by
Rule 3 of this Order and not by the foregoing paragraphs of
this Rule.
5. (a) All appeals to the Court from any decision of the Comptroller
under Sections 20, 21, 24, 26, 27, 37 and 38A of the principal Act or from the
decision of the arbitrator under Section 27(12) of the principal Act shall be
brought by petition presented to the Court within one calendar month of the
decision of the Comptroller or the arbitrator as the case may be or within such
further time as the Court may under special circumstances allow. A copy of
the petition shall be served by the appellant upon the Comptroller and upon any
other person interested. Each such petition shall state the nature of the decision
appealed against, and whether the appeal is from the whole, or part, only, and
if so, what part of such decision. It. shall also state concisely the grounds of
the appeal, and no grounds, other than those so stated, shall, except with the
leave of the Court, to be given on such terms and conditions as may seem just,
be allowed to be taken by the appellant at the hearing.
(b) Every such appeal shall, if and so long as t lie Court is a Judge of
the Chancery Division, and subject to any direction of the Court to the contrary,
he set down in the same manner as if it were a witness action assigned to
such Judge and he heard and disposed of in due course.
(c) In all proceedings before the Court under the said Sections of the
principal Act, the evidence used shall be the same as that used at the hearing
before the Comptroller or the arbitrator as the case may be, and no further
evidence shall bo given except by the leave of the Court on application to be
made to the Court at or before the hearing.
6. In all proceedings before the Court under the principal Act the Court
shall havo all the powers by the principal Act. vested in the Comptroller and
may make any order which might, or ought to, have been made by the
Comptroller.
7. In all proceedings before the Court under the principal Act the costs
of and incident thereto, and also the costs of hearings before the Comptroller,
shall he in the discretion of the Court.
8. If a defendant, in an action for infringem-nil of a patent intends to
rely as a defence to such action on the insertion by the patentee in any contract
or contracts of any condition which by virtue of Section 38 of the principal Act,
is null and void, lie shall deliver with his defence full particulars of the dates
and parties to all contracts oil which he intends to rely as containing any such
condition, and of the particular conditions in any such contracts on which he
intends to rely as being by virtue of that Section null and void, and save as
appears from such particulars, no defence shall bo available to liim in such
action under sub-section (4) of that Section. Provided that particulars delivered
under this Rule may he from time to time amended by leave of the Court.
9. Any person presenting a petition for the revocation of a patent under
Section 25 of the principal Act must deliver with his petition particulars of the
objections to the validity of the patent on which lie means to rely and no
evidence shall, except by leave of tin* Court, he admitted in proof of any
objection of which particulars are not so delivered.
10. The respondent to a petition for the revocation of a patent under
Section 25 of the principal Act shall lie entitled to begin and give evidence in
support of the patent and if the petitioner gives evidence impeaching the
validity of the patent the respondent shall be entitled to reply.
11. In an action for infringement of a patent the plaintiff must deliver
with his statement of claim particulars of the breaches relied upon.
12. In an action for infringement of n patent the defendant if he disputes
the validity of the patent must deliver with his defence, particulars of the
objections on which he relies in support of such invalidity.
13. A defendant in an action for infringement of a patent who under
Section 32 of the principal Act counterclaims in the action for the revocation
of the patent shall with his counterclaim deliver particulars of any objection to
the validity of the patent on which lie relies in support of his counterclaim.
972
THE LAW OF PATENTS IN INDIA
14. Particulars of breaches shall specify which of the claims in the
specification of the patent sued upon are alleged to be infringed and shall
give at least one instance of each type of infringement of which complaint
is made.
15. Particulars of objections (whether delivered with the defence in an
action for infringement of patent or with a petition for revocation under
Section 25 of the principal Act or with a counterclaim for revocation under
Section 32 of the principal Act) must state every ground upon which the
validity of the patent is disputed and must give such particulars as will
clearly define every issue which it is intended to raise.
16. If one of the objections taken in the particulars of objections be
want of novelty, the particulars must state the time and place of the previous
publication or user alleged, and if it be alleged that the invention has been
used prior to the date of the patent, must also specify the names of the persons
or person who are alleged to have made such prior user and whether such
prior user is alleged to have continued down to the date of the patent, and if
not, the earliest and latest dates on which such prior user is alleged to have
taken place, and shall also contain a description (accompanied by drawings if
necessary) sufficient to identify such alleged piior user, and if such user
relates to any machinery or apparatus shall specify whether the same is in
existence and where the same can be inspected.
No evidence at variance with any statement contained in the particulars
shall be given in support of any objection, and no evidence as to any machinery
or apparatus which is alleged to have been used prior to the date of the patent
and which is in existence at the date of the delivery of the particulars shall
be receivable unless it be proved that the party relying on such prior user
has, if such machinery or apparatus be in his own possession, offered inspection
of the same, or if not in his own possession, has used his best endeavours
to obtain inspection of the same for the other parties to the proceedings.
17. Particulars of breaches and particulars of objection may from time
to time lie amended by leave of the Court upon such terms as may be just.
18. Further and better particulars of breaches or particulars of objections
may at any lime be ordered by the Court.
19. At the hearing of any action, petition or counterclaim relating to a
patent, no evidence shall, except by leave of the Court (to be given upon such
terms as to the Court may seem just) be admitted in proof of any alleged
infringement or objection not raised in the particulars of breaches or objections
respectively.
20. On taxation of costs in any action or counterclaim for infringement
of patent or in any petition for revocation of a patent under Section 25 of
the principal Act or in any counterclaim for revocation of a patent under
Section 32 of the principal Act, the following provision shall apply, that is to
say :
If the action, petition or counterclaim proceeds to trial on any
patent, no costs shall be allowed in respect of uny issues raised in the
imrticuhMS of breaches or particulars of objections and relating to that
patent to the parties delivering the same, respectively, except in so
fur as such particulars are certified by tile Court to have been proven
or to have been reasonable and proper without regard to the general
costs of the case, but subject as aforesaid the cost of the issues raised
by the particulars of breaches and the particulars of objections shall,
he in the discretion of the Taxing Master.
21. Where an application is made by a patentee for leave to amend his
specification by way of disclaimer under Section 22 of the principal Act, the
billowing provisions shall apply: —
(a) The application shall be made by motion in the proceeding*
pending before the Court, and notice of such motion together
with a copy of the specification certified by the Comptroller
showing in red ink the amendment proposed to be made shall
be served on the parties to such proceedings, and in the first
instance upon such parties only.
APPENDIX III
973
(b) On the henring of such motion the Court shall decide whether
and on what terms as to costs or otherwise the application shall
be allowed to proceed, and if the application be allowed to
proceed, shall give directions as to whether such application
shall be heard on oral or affidavit evidence and if on affidavit
evidence shall fix the times within which affidavits shall be
filed by the parties, respectively, and by any other person
entitled to be beard under the principal Act or these Rules.
(r) If the application be allowed to proceed the applicant shall
forthwith serve the Comptroller with a copy of the notice of
motion together with such cony specification as aforesaid and
also an office copy of the order allowing the application to
proceed, and also with the name and address of the applicant's
solicitor, and the proposed amendment shall be advertised in
the Official Journal (Patents), such advertisement stating that
any person desiring to oppose the amendment must within
fourteen days of the issue of the advertisement give notice in
writing of such desire to t lie applicant’s solicitor, whose name
and address for that purpose shall be also stated in the advertise-
ment. Any person giving such notice shall be entitled to be
heard, upon the hearing of the motion.
(ft) Within seven days after the receipt of any such notice the
applicant shall, if the person giving such notice shall have stated
therein an address for service within the United Kingdom, serve
on such person a copy of the notice of motion together with
such copy of tho specification us aforesaid, and also a copy of
the order allowing the application to proceed. Such service
may be made by prepaid registered letter sent to such person
through the post n t his address for service.
(r) In the case of an application directed to be heard on oral
evidence the applicant shall as soon as he shall have com-
plied^ with the requirements of the preceding Rules set the same
down for hearing in the witness list and in the case of an
application directed to he heard on affidavit evidence the
applicant shall after sucli compliance as aforesaid and after the
the times fixed for filing evidence have expired set the same
down fur hearing in the 11011 -witness list and the application
so set down shall he heard and disposed of in due course.
(/*) Where the Court allows a specification to he amended the
applicant shall forthwith lodge with the Comptroller an office
copy of the order allowing such amendment, and the Comptroller
shall advertise the same once at least in the Official Journal
(Patents). The applicant shall ulso if required so to do by
the Court or bv the Comptroller leave at the Patent Office
a new specification and drawings as amended, the same being
prepared as far may he in accordance with the Rules of the
Patent Office for the time being in force.
21A. (1) The plaintiff in an action fur infringement of a patent so soon
as he becomes entitled to give notice of trial shall and the defendant in such an
action if the plaintiff makes default under this Rule for fourteen days may
apply under Rule 1(e) or Rule 5 nf Order XXX fur directions as to the mode
of trial. Such application may he dealt with in Chambers or in Court as the
Judge shall think fit. Upon any such application such directions for the
delivery of further pleadings or particulars or statements in the nature of
fuvther pleadings or particulars ami for the making of experiments, tests or
inspections for the purposes of the trial, and for obtaining reports und for the
hearing of any preliminary question that may arise and otherwise may he
given as the Court or the Judge shall think necessary or expedient for the
purposes of (a) determining any question of construction which may arise
on the specification, (b) defining, limiting or directing the issues of fact to be
tried, (r) restricting the number of witnesses to he called at the trial 011 any
particular issue, and (ft) otherwise securing that the trial shall he copdqcted
074 THE LAW OF PATENTS IN INDIA
consistently ' with adequate hearing in the most expeditious manner. No action
for infringement of a patent shall be set down for trial unless and until an
application under this Rule has been made and disposed of.
(2) The like provisions shall apply mutatis mutandis to petitions for
the revocation of a patent, and no such petition shall be heard unless and
until an application under this Rule has been made and disposed of.
22. All references of disputes to the Court under Section 29 of Ihe
principal Act are hereby assigned to the Chancery Division and shall be
commenced by originating notice of motion to which the provisions of Order
V 7 , Rule 9(r) , shall apply. Where the application is by a patentee or by a pro-
prietor of a registered design the notice of motion shall be addressed to the
Government Department or Departments concerned and shall be served on the
Treasury Solicitor. Where the application is by a Government Department it
shall be served on the patentee or on the proprietor of the registered design as the
case may be and may be made through the Treasury Solicitor or through the
Solicitor of the Department and in the latter case shall be forthwith notified
to the Treasury Solicitor, unless the Judge shall give special leave to the
contrary. There shall be at least ten clear days between the service of a
notice of motion under this Rule and the d*ay named in the notice for hearing
the motion.
(There are in India no special provisions in the nature of Rules of Court
corresponding to the above, regarding patent suits in India; neither in the
Civil Procedure Code itself nor in the respective Rules of any of the three
Chartered High Courts.]
llKl’EALrED INDIAN ACTS AND BULKS.
C0NTENT8.
Note.- The Acts which follozv have been repealed. 7 hey arc set out here
for purposes of historical reference .
Repealed Act*:-
1. Art No. VI of 1856. (An Art for grant ng exclusive privileges to
Inventors.)
2. Act No. IX of 1857.
3. Art No. XV of 1859. (An Art for granting exclusive privileges to
Inventors.)
4. Art No. XIII of 1872. (An Art to amend Act XV of 1859.)
5. Art No. XVI of 1883. (An Art for the protection of Inventions
exhibited in the Exhibitions of India.)
6. Act No. V of 1888. (The Inventions and Designs Art, 1888. An
Act to consolidate and amend the law relating to the Protection
of Inventions and Designs.)
Repealed Rules:—
7. Indian Patents and Designs Rules, 1912. (This set of Rules was
published in Part. II of the “ (lazette of India,” dated 23rd
September, 1911, at page 1441. They came into effect on 1st
January, 1912. They were repealed f»y Rule 68 of the current
Indian Patents and Designs Rules of 1933: for which see Appendix
No. V.)
APPENDIX IV
.977
ACT NO. VI OF 1856.
(Received the assent of the Governor-General on the 28th February, 1856.)
Note. — The following is a summary of the provisions contained in Act VI
of i8$6, see Theobald's Legislative Acts of the Governor-General of India in
Council ( 1868 Edn.) Vol. II, at page
Recites expediency of privileges to inventors of new manufactures.
1. Inventor to petition Governor-Geiieial-in-Cnuiicil for leave to file
specification: form of petition.
2. Governor-General-in-Council may give leave.
3. And may, before doing so, refer to any person for enquiry, such
person to be entitled to fee.
4. Inventor, his executors, etc., and those authorized by him, upon his
filing specification within six months after leave given, entitled exclusively to
make, sell and use invention in India for fourteen years; and for such further
term as (on petition presented in manner directed) Governor-Generul-in-Council
may grant.
5. Orders of Governor-General-in Council upon petitions may coutain
conditions and restrictions.
6. Requisites of specification.
7. Petition and specification how to be filed, to be accompanied by
declaration in form specified.
8. Wilful and corrupt false declaration, perjury.
9. Fees to be paid before filing specification.
10. Five copies to be given at time of filing, one of which open for
public inspection on payment of one rupee.
11. Petitions and specifications to be recorded in book.
12. Which book to public on payment, of one rupee, and certified copies
of entries to be furnished if paid for.
13. Such certified copies /rrima proof.
14. Exclusive privilege void, if invention not now, or if petitioner not
inventor, or if specification not precise as to the invention and manner of
execution.
15. Powtv to (loveriior-General-in-Couiicil to put an end to privileges
granted, if considered mischievous to State or prejudicial to public. If proved
to H, M.’s Court that condition under which specification filed, or further
term granted, broken, Governor-General-in Council may declare privileges at an
end.
16. Importer to be deemed an inventor, but privilege to cease unless the
invention put in practice within two years from date of petition and continue
to be ill use or available.
17. Foreigner may petition.
18. Invention, a new one, if not publicly used in Tudia or made public
in print. Knowledge fraudulently obtained, or published, not to prevent
invention being new under this Act, if not acquiesced in by inventor, and
leave to file specification be applied for within six mouths of being so used or
known. Gse by inventor or by bis authority, not to public use.
19. Patentee in tbiited Kingdom may petition within six months of date
of British patent, if invention not known in India at date of letters patent
although known or used afterwards; and uti grant of privilege by Governor-
General in-Council all exclusive privilege, previously obtained by importer, to
cease, provided petition recite particulars of British patent.
20. No person who has used an invention prior , to 74 h July, 1855, can
be excluded.
21. Action for infringement, and where to be brought.
22. How such action may and may not be defended.
23. Rule ni*i may be obtained in II. M.'s Court to declare privilege not
in conformity with this Act, upon six objections specified.
24. Like applications as to part of an invention, for the objections
specified*
183
978
THE LAW OF PATENTS IN INDIA
25. Advocate-General entitled to Rule ni»i to try any fact on which
revocation of exclusive privilege may depend by an issue. Subsequent
proceedings.
26. Notice of proceeding under three last sections to be served on all
persons apparently interested and on no other.
27. Issue upon any question of fact arising under Sections 23, 24, 25,
may he directed by the Court to any Court of H. M. or any principal Civil Court
of East India Co. ; such issue to be tried in a summary manner.
28. Court at hearing of application under Sections 23 and 24 may give
judgment against the privilege, which shall cease.
29. Certain defects in specification not to be fatal to the privilege; and
may be amended by the Court if so doing, no injury to the public.
30. Misdescription not to vitiate, unless fraudulent.
31. Upon judgment against privilege, Secretary to make entry accordingly
in book of registry.
32. Upon proof before H. M.’s Court any principal Civil Court of East
India Co. within two years from date of petition by an inventor that the latter
has fraudulently obtained his privilege, the Court may compel him to assign his
privilege and to account for profits.
33. Particulars of infringement of defence, also of objections, in action
or application under this Act, must be delivered.
34. Book in Home Secretary’s Office (open to inspection without fee) to
contain name of person to receive service of Rule or Proceedings, also of names
of proprietors and partners in the privilege/ service in conformity therewith
sufficient.
35. Act not to interfere with Prerogative.
36. Stamp.
37. Interpretation clause.
An Act for granting exclusive privileges to Inventors.
f/V./f. Repealed by Act IX of 1857, and New Patent Law substituted for it by
Act Xl r of 7 # 5 p.]
AM’ENnix iV
0?9
ACT IX OF 1857.
(Received the assent of the Governor-General on the 20th May, 1857.)
[Note.— Sec Theobald's Legislative Acts of the Governor-General of India
in Council (1S6S Edit ) Vol. II, at page 642 . ]
Recites that the Court of Directors have disallowed Act VI of 1856 and
repeals it.
An Act to repeal Act VI of 1856.
Preamble. — Whereas the Court of Directors of the East India Company
have, in pursuance of the power vested in them by law disallowed Act VI of
1856 and have signified to the Governor-General of India in Council their
disallowance thereof, it is enacted ns follows: —
1. Act repealed. — Act VI of 1856 is hereby repealed.
MO THE LAW OF PATENTS IN INDIA
ACT XV OF 1859.
Passed by the Legislative Council of India.
(Received the assent of the Governor-General on the 17th May, 1859.)
An Act for granting exclusive privileges to Inventors.
Whereas Act VI of 1856 entitled “ An Act for granting exclusive privileges
to Inventors,” was pissed by the Legislative Council of India without the
sanction of Her Majesty to the passing thereof having been previously obtained
and signified in pursuance of the Statute passed in the seventeenth year of the
reign of Her Majesty, entitled “ An Act to provide for the Government of
India ” and' whereas Her Majesty's Law Officers having given it as their opinion
that the Legislative Council of India was not competent to pass Act VI of 1856
without previously obtaining the sanction of the Crown, and the Court of Directors
of the East India Company having in pursuance of the power vested- in them
by law disallowed Act VI of 1856 and having signified to the Governor-General
of India in Council their disallowance thereof, the said Act was repealed by Act
IX of 1857; and whereas it is expedient for the encouragement of Inventors
of new manufactures, that certain exclusive privileges in their inventions should
he granted to them in India, and that exclusive privileges obtained under the
saitj Act should he protected. It is enacted as follows (the sanction of Her
Majesty to the passing of this Act having been previously obtained and signified
in pursuance of the said Statute) : -
I. Inventor may petition for leave to file specification. Form, etc., of
petition. — The inventor of any new manufacture may petition the Governor-
General of India in Council for leave* to file a specification thereof. Every such
petition shall he in writing in the form nr to the effeet mentioned in the
Schedule hereunto annexed, and shall he signed by the petitioner, or in case the
petitioner shall he absent from India, by ail authorized agent, and shall state
the name, addition, and place of residence of the petitioner, and the nature of
the invention.
II. Order to file specification. — Upon such petition, the Governor-General
of India in Council may make an order authorizing the petitioner to file a
specification of the invention.
III. Power to refer petition for enquiry and report.— Re fore making sueli
order, the Governor General of India in Council may refer the petition to any
person or persons for enquiry and report, and such person or persons shall lie
entitled to a reasonable fee for such enquiry and report to he paid by the peti-
tioner; the amount of such fee, in case of dispute to he settled by a Judge of
one of Her Majesty's Courts of Judicature in a summary manner.
IV. Extension of term of exclusive privilege for fourteen years from the
time of filing specification. — If, within the space of six calendar months from the
date of such order, the petitioner cause a specification of his invention to be filed
in manner hereinafter mentioned, the petitioner, his executors, administrators,
or assigns, shall be entitled to the sole and exclusive privilege of making, selling
and using the said invention in India, and of authorizing others so to do. for
the term of fourteen years from the time of filing such specification, and for such
further term (if any) not exceeding fourteen years from the expiration of the first
fourteen years as the Governor-General of India in Council may think fit to
direct, upon petition to be presented by such inventor, at any period not more
than one year, and not less than six calendar months, before the expiration of
the exclusive privilege hereby granted.
V. Order to file specification may be made subject to conditions.— An
order authorizing the filing of a specification, or for extending the term of such
exclusive privilege as aforesaid may be made subject to any such conditions and
restrictions as the Governor -General of India in Council may think expedient.
VI. Specification to be in writing end to describe the invention.— Every
specification of an invention filed under this Act shall be in writing, and shall be
signed by the petitioner, and shall particularly describe and ascertain the nature
of the said invention in what manner the same is to to be performed.
APPENDIX IV
081
VII. Petition end specification to be left with Secretary to Government.
Petition, eto., to be accompanied by declaration. Date of Delivery to be endoraed
on petition. — Every petition for leave to file a speeifieation and every specifica-
tion filed under this Act shall be left with the Secretary to the Government of
India in the Home Department, and every petition and specification shall ho
accompanied by a declaration in writing signed by the petitioner in the forms or
to the effect mentioned! in the Schedule hereto annexed, and if the inventor
l>e absent, from India, the petition and specification shall also he accompanied
by a declaration signed by the agent who shall present or file the same, to
the effect that he verily believes that the declaration purporting to he the
declaration of the inventor was signed by him, and that the contents thereof are
true, which declaration shall be in the form 01 to the effect mentioned in the
said Schedule. The date of the delivery of every such petition and specification
shall be endorsed on the same respectively, and shall also be recorded at the
Office of the said Secretary.
VIII. False statement in declaration punishable as perjury.— If any person,
who shall make a declaration under this Act, shall wilfully and corruptly make
any false statement I herein, he shall be deemed guilty of perjury, and shall he
proceeded against, and upon conviction punished accordingly.
IX. Speeifieation not to be filed before payment of fees.— No specification
shall be filed until the petitioner shall have paid all fees payable under this Act,
including the fees (if any) of the person or persons to whom the petition shall
have been referred for enquiry and report.
X. Copies of specification to be delivered end distributed. To be open to
inspection. — At the time of delivering the specification for the purpose of being
filed, the petitioner shall cause to he delivered to I hr said Secretary five* copies
thereof, of which —
One shall he sent to and filed by one of the Secretaries to the Government
of Bengal ;
One shall ho sent to and filed liy one of the Secrelaiies to the Government
of Fort St. George ;
One shall he sent to and filed by one of the Secretaries to the Government
of Bombay; and
One shall be sent to and filed by one of the Secretaries to the Government
of the North Western Provinces.
A copy of such specification shall he open at all reasonable times at the
Office of each of the said Secretaries to public inspection upon payment,
of a fee of one Rupee.
xr. Book for the registry of petitions, specifications, etc.— A book shall
he kept in the Office of the said Secretary to the Government, of India wherein
shall be entered and recorded every such petition and spccific.il ion and every order
made upon sueli petition or relating to the invention therein mentioned. Every
specification shall be numbered according to the order in which it is entered
in such book; and a reference shall he made in such book, in the margin of the
entry of each specification In every order relating to the invention, and to every
petition, memorandum, or amended specification which shall he filed under the
provisions of Section XIV.
XII. Inspection of registry book. Certified copy of entry to be given.—
Such book or a copy thereof shall be open at all convenient times for the
inspection of any person upon payment of a fee of one Rupee; and the said
Secretary shall cause a. copy of any entry therein, certified under his baud,
to be given to any person requiring the same, on payment of the expenses
of copying.
XIII. Certified copy to be prime faoie evidence. Every such certified copy
shall be piima facie evidence of the document of which it purports to he a ropy.
XIV. In what cases petitioner may apply for leave to file amended
specification. Effect of amended speeifieation.— If. after the filing of the specifica-
tion, the petitioner shall have reason to believe that through mistake nr inadvert
ence he has erroneously made any mis statement in his petition or specification, or
included therein something which at the date of his petition was not new or
whereof he wag not the inventor, or that such specification is in any particular
THE LAW OF PATENTS IN iMDtA
defective or insufficient, lie may petition the Governor-General-in-Council for
leave to file a memorandum pointing out sucli error, defect, or insufficiency, and
disclaiming any part of the ajleged invention, or, in case of any defect or
insufficiency of the specification, for leave to file an amended specification. The
petition shall state how the error, defect, or insufficiency occurred and that it was
not fraudulently intended, and shall he accompanied by a declaration in writing
signed by the petitioner, and if he be absent from India by his agent, stating
that the contents of such petition are true to the best of his knowledge and
belief. Upon such petition the Governor-General-in-Council may make an order
allowing such memorandum or amended specification to be filed. All the provisions
of Sections X, XI, XII and XIII, applicable to specifications, shall be applicable
to the petitions, orders, urul memoranda or amended specifications referred to
ill this Section. An amended specification filed under the provisions of this Act
shall, except as to suits or proceedings relating to the exclusive privilege which
shall be pending at the time of the filing of such amended specification, have
the same effect as if it had been the specification first filed, provided that nothing
contained in an amended specification shall extend or enlarge any exclusive
privilege before acquired.
XV. No person entitled to exclusive privilege in any off the following cases.
— No person shall be entitled to any exclusive privilege under the. provisions ul
this Act
If the invention is of no utility; or
If t-lici invention, at the time of presenting the petition For leave to file the
specification, was not a new invention within the meaning of this Act; or
If the petitioner is not the inventor thereof; or
If the specification filed or the amended specification (if any) does not
particularly describe and ascertain the nature of the invention and in what
maimer the same is to he performed; or
If the original or any subsequent petition relating to the invention or the
original or any amended specification contain a wilful or fraudulent mis-statement.
XVI. Exclusive privilege to cease iff Government declare it mischievous,
etc., to publie. Or iff Government, upon breach of condition proved, declare that
it shall cease. — Kvery exclusive privilege under this Act shall cease if the Governor-
Goneral-iii-Couneil shall declare that the same, or the mode in which it is
exercised, is mischievous to the State, or generally prejudicial to the public;
or if a breach of any special condition oil which the petitioner shall be authorized
to file a specification, or upon which the term of the exclusive privilege shall
he extended, shall he proved to the satisfaction of any of Her Majesty’s Courts
of Judicature, and if the Governor-General of India in Council shall thereupon
declare that such exclusive privilege shall cease.
XVII. Importer off invention, if not the actual inventor, not to be deemed
Inventor. — The importer into India of a new invention shall not be deemed an
inventor within the meaning of this Act, unless he he the actual inventor.
XVril. Foreign inventor. — A foreigner, whether resident abroad or not may
petition for leave to file a specification under this Act.
XIX. An invention not pjiblidy used or known in the United Kingdom or
in India before the application for leave to tile a specification, to be deomed a
new invention within this Act. — An invention shall be deemed a new invention
within the meaning of this Act, if it shall not, before the time of applying for
leave to file the specification, have been publicly used in India or in any part of
the United Kingdom of Great Britain and Ireland, or been made publicly known
in any part of India or of the United Kingdom by means of a publication, either
printed or written or partly printed and partly written.
Knowledge off invention fraudulently aoquired.— The public use or
knowledge of an invention, prior to the application for leave to file a specification,
shall not be deemed a public use or knowledge within the meaning of this
Section, if the knowledge shall have been obtained surreptitiously or in fraud of
the inventor, or shall have been communicated to the public in fraud of the
inventor, or in breach of confidence.
Proviso. — Provided the inventor shall, within six calendar months after
the commencement of such public use, apply for leave to file his specification,
APPENDIX IV
980
and shall not previously have acquiesced in such public use; provided also that
the use of an invention in public by the inventor thereof, or by his servants or
agents or by any other person by his licence in writing for a period not exceeding
one year prior to the date of his petition, shall not be deemed a public use
thereof within the meaning of this Act.
XX. Inventor having obtained English Letters Patent, to petition within
twelve months from the passing of this Act or from the date of the Letters Patent.
Invention, if not publicly known or used in India at the time of applying for suoh
Letters Patent, to be deemed new. What to be stated in suoh petition. Duration
Off exclusive privilege. — If an inventor who, prior to the time of applying for
leave to file a specification of an invention under this Act, shall have obtained
Her Majesty’s Letters Patent for the exclusive use of such invention in the
United Kingdom or any part thereof shall, within twelve calendar months from
the passing of this Act, or within twelve calendar months from the date of suck
Letters Patent, petition the (Sovernor-Ueneral of India in Council for leave to
file a specification of such invention (which petition shall he in writing in the
form or to the effect mentioned in the Schedule), the invention shall he deemed
a new invention within the meaning of this Act, if it was not publicly known
or used in India at or before the date of the petition for such Letters Patent
notwithstanding it may have been publicly known or used in some pari of the
United Kingdom or in India before the time of bis petitioning, under this Act, for
leave to file the specification. Provided the petition for leave to file the specifica-
tion shall state that such Letters Patent have been granted, and shall also state
the date thereof and the teun during which the same are to continue in force.
Provided also that an exclusive privilege obtained under the provisions of this
Act, by an inventor who has obtained Her Majesty's letters Patent for the
exclusive use of such invention, shall cease to have effect, if such Letters Patent
be revoked or cancelled; and. that no such exclusive privileges shall extend
beyond the term granted by such Letters Patent unless the same shall be
renewed, in which case the exclusive privileges may be renewed under this Act
for the extended term or any part thereof.
XXI. Saving of rights of persons who used invention before 7th of July
1855. — No exclusive privilege obtained under this Act shall entitle the owner
of such privilege to exclude, any person from using the invention, who, prior
to the 7th day of July 1865, used the same in India.
XXII. Action for infringement. — An action may be maintained by an
inventor against any person who, during the continuance of any exclusive
privilege granted by this Act, shall without the licence of the said inventor,
make, use, sell, or put in practice the said invention, or who shall counterfeit
or imitate the same. Provided that no such action shall be maintained in any
Court other than the principal Court of original jurisdiction in Civil cases
within the local limits of whose jurisdiction the cause of action shall accrue or
the defendant, shall reside as a fixed inhabitant.
XX 111. Defect in specification or petition, or want of novelty in invention,
etc., no defence to action for infringement. The actual use of an invention in
India or the United Kingdom before date of petition a defence to such action.—
No such action shall he defended upon the ground of any defect, or insufficiency
of the specification of the invention, nor upon the ground that the original or
any subsequent petition relating to the invention or the original or any amended
specification contains a wilful or fraudulent mis statement, nor upon the ground
that, the invention is not useful nor shall such action he defended upon the
ground that, the plaintiff was not the inventor unless the defendant shall show
that he is the actual inventor or has obtained a right from him to use the
invention either wholly or in part. Any such action may he defended upon the
ground that the invention w f as not new, if the person making the defence, or
some person through whom he claims, shall, before the date of the petition
for leave to file the specification, have publicly or actually used in India or
in some part of the United Kingdom, the invention, or that part of it of which
the infringement shall be proved; hut not otherwise.
XXIV. Invention of no utility, invention not new. Petitioner not the
Inventor. Invention not described in specification. Fraud in Petition or
epecifieation, Fraudulent mil-statement in petition or speeffioation. Insufficient
984
THE LAW OF PATENTS IN INDIA
description of part of invention in specification.— It shall be lawful for any person
to ‘apply by motion to any of Her Majesty’s Courts of Judicature for a rule to
show cause why the Court should not declare that an exclusive privilege in
respect of an invention has not been acquired under the provisions of this Act by
reason of all or any of the objections following (tb be specified in the rule)
that is to say —
That the said invention is of no utility; or
That the said invention was not, at the time of presenting petition for
leave to file the specification, a new invention within the meaning of this
Act ; or
That the petitioner was not the inventor thereof; or
That the specification filed or the amended specification (if any) does
not particularly describe and ascertain the nature of the invention or in what
manner the same is to be performed; or
That the petitioner lias knowingly or fraudulently included in the petition
or specification ur amended specification, ns part of his invention, something
which was not new or whereof lie was not the inventor; or
That the original or any subsequent petition relating to the invention,
or the original or any amended specification contains a wilful or fraudulent
mis-statement ; or
That some part of tiie invention, or the manner in which that part is to
be performed as described in the specification filed or the amended specification,
is not thereby sufficiently described and ascertained, and that such defect or
insufficiency was fraudulent and is injurious to the public.
XXV. Like application as to part of an invention.— Any person may,
in like manner, apply to any of Her Majesty’s Courts of Judicature for a rule
to show cause why the Court should not declare that an exclusive privilege has
not been acquired under the provisions of this Act in respect of any part of the
invention to he specified in the rule by reason of all or any of the objections
following (to he specified in the rule) that is to say—
That such part of the invention is wholly distinct from the other part
thereof and is of no utility; or
That such part of the invention was not, at the date of the petition
for leave to file the specification, a new invention within the meaning of this
Act ; or
That the petitioner was not the inventor of that, part of the invention; or
That that part of the invention, and the manner in which it is to he
performed, is not sufficiently described and ascertained in t lie specification filed
or the amended specification, and that such defect or insufficiency is injurious
to the public.
XXVI. \Application by Advocate-General on breach of special condition.-
It shall be lawful for the Advocate-General at any of the Presidencies of Fort
William in Bengal, Fort St. George, and Bombay, or any other person, by order
of the Governor-General-in-Council, to apply to any of the said Courts of
Judicature for a rule calling upon the petitioner, his executors, administrators,
or assigns, to show cause why the question of the breach of any special condition
upon which the leave to file a specification has been granted, or any other
finest ion of fact on which t ho revocation of the exclusive privilege by the
Governor-General in Council under the power hereinbefore reserved may, ill the
judgment of the said Governor-Goneral-iii-Coiincil, depend, should not be tried
in the form of an issue directed hv the said Court ; and if the rule be made
absolute, the Court, unless the breach or other matter of fact he admitted, may
thereupon direct such issue to he tried, and certify the result of such trial to
the Goveriior-General-iii Council. The costs of such trial, ami also the costs
of any proceedings in any of the said Courts of Judicature under the provisions
of this Act, shall he in the discretion of the Court.
XXVII. Service of proceedings on all persons interested.— Notice of any
rule obtained or proceeding taken under either of the last three preceding
Sections shall he served on all persons appearing to he proprietors or to have
shares or interests in the exclusive privilege under the provisions of Section XXXV
of this Act, and it shall not he necessary to serve such notice on any other
persons,
APPENDIX IV
005
XXVIII. 8upreme Court may direct issue for trial to other Courts. Haw
trial. — Aliy of the (mid Courts of Judicature, if it think fit, may direct an Jssue
for the trial, before the game Court or uuy cither Court of Judicature or any
principal Court of original jurisdiction in Civil cases, of any question of fact
arising upon an application under Section XXIV. XXV, or XXVI of this
Act, and such issue shall be tried accordingly in a summary manner, and, if
the issue he directed to another Court, the finding shall be certified by the
Court before which the same was tried, to the Court directing the issue.
If the issue he directed to any Court of Judicature, the Court hy which
the issue is tried may, before the finding is certified, direct a new trial of such
issue according to the usual course and practice of such Court. If the issue be
directed to any Court other than a Court of Judicature, the finding shall not
be subject to appeal, but the evidence taken upon the trial shall he recorded anil
a copy thereof, certified by the Judge, shall ho transmitted, together with any
remarks he may think fit to make thereon, to the Court by which the issue was
directed; and such Court, may cither act upon the decision of the Court which
tried the issue, or direct a new trial if it shall appear necessary.
XXIX. Costs. — If it shall appear to any of the said Courts of .Judicature
at the hearing of any application under the provisions of Section XXIV or XX V
of this Act that, by reason of any of the ’objections therein mentioned, the
said exclusive privilege in the invention or in any part thereof has not been
acquired, the Court shall give judgment accordingly, end shall make such order
as to the costs of and consequent upon the application as it may think just; and
thereupon the petitioner, his executors, administrators, and assigns shall so long
as the judgment continues in force, cease to he entitled to such exclusive
privilege.
XXX. Amendment of specification by Court.— If the Court, at the hearing
of any such application as last aforesaid, shall think that the petitioner has, in
the description of his invention in the petition or specification (if any) included
something which at the date of the petition was not new or whereof he was
not the inventor, or thut the specification is in any particular defective or
insufficient, but. that the error, defect, or insufficiency was not fraudulently
intended, the Court may adjudge the said exclusive privilege to have been
acquired and to be valid, save as to the part thereof affected by such error,
defect, or insufficiency, or if the Court shall think that the error, defect, or
insufficiency can be amended without injury to the public, they may adjudge
the exclusive privilege in the whole of the invention to be valid, and may, upon
such terms as shall appear reasonable, order the specification to he amended
in any of the said particulars : and thereupon the petitioner, his executors,
administrators, or assigns shall, within the time limited by the said Court for the
purpose, file a specification amended according, to such order.
Provided that no such amended specification shall have file effeef of
extending or enlarging the exclusive privilege before acquired.
XXXI. Mis-statement In the petition, if not fraudulent, not to defeat the
privilege. — Ail exclusive privilege shall not tie defeated upon the ground that,
the petition contains a mis-statement, unless such mis-statement was wilful or
fraudulent.
XXXII. Entry in registry hook of judgment, ete., declaring privilege not
tp hove boon aoqulrod. — Whenever it shall be adjudged by any of the said Courts
of Judicature that ail exclusive privilege as to the whole or any part of ail
invention has not been acquired, the said Secretary to the (lovernment of India
shall, upon the production of the judgment nr order, cause an entry thereof
to be made in the said book hereinbefore directed to be kept and shall causo
a reference to such entry to he made in file margin of the entry of the specifica-
tion contained in such hook.
XXXIII. lit whet ease actual inventor entitled to assignment of an
exeluslve privilege fraudulently obtained.— If, upon proceedings instituted within
two years from the date of a petition to file a specification, the actual inventor
shall prove to the satisfaction of the principal Court having jurisdiction in Civil
cases within the local limits of whose jurisdiction the defendant shall reside as
A* fixed inhabitant, that the petitioner was not the actual in von tor, and that
at the time of the petition he knew or had good reason to believe that the
knowledge of the invention was obtained by himself or by some other person
124
986
THE LAW OP PATENTS IN INDIA
surreptitiously or in fraud of the actual inventor, or by means of a communication
made in confidence by the actual inventor to him or to any person through
whom he derived such knowledge, the Court may compel the petitioner to
assign to the actual inventor any exclusive privilege obtained under this Act
and to account for and pay over the profits thereof.
XXXIV. Pirtioiilars to be delivered. — In any action for the infringement
of such exclusive privilege, the plaintiff shall deliver with his plaint particulars
of the breaches complained of in the said action; and the defendant shall deliver
a written statement of the particulars of the grounds (if any) upon which he
means to contend that the plaintiff is not entitled to an exclusive privilege, in
the invention. In like manner, upon any application to any of the said Courts
of Judicature under Section XXIV, XXV, or XXVI of this Act, the applicant
shall deliver particulars of the objections on which he means to rely. At the
trial of any such action or issue, no evidence shall be allowed to lie given in
support of any alleged infringement or of any objection impeaching the validity
of such exclusive privilege which shall not he contained in the particulars
delivered as aforesaid. If it be alleged that the invention was publicly known
or used prior to the date of the petition for leave to file such specification, the
places where ami the manner in which the invention was so publicly known cm*
used Hindi be stated in such particulars. Provided, always that it shall he lawful
for any Court in which the action or proceeding is pending, or in which I lie
issue is tried, to allow the plaintiff or defendant respectively to amend the parti-
culars delivered ns nfoiesaid upon such terms as shall seem fit.
XXXV. Serviee of proceedings. — A book shall be kept, in the Office of
the Secretary to the Government- of India in the Home Department (such book to
be open to inspection without fee) wherein every person filing a specification under
this Act, or any person to whom the exclusive privilege may be assigned, shall
cause to be stated some place in India where service of any rule or proceedings
for the purpose of cancelling or revoking his exclusive privilege may be made,
and shall cause a reference to such entry to be made in the margin of the entry
of the specification, and may from time to time cause any other place in India,
to he substituted by a similar entry and reference. All such rules and proceed
ings as aforesaid shall he deemed sufficiently served if a copy thereof be left at
the place entered in such book or (if any other place be substituted for the same
l>y entry in the said book) at the place last substituted, by delivering the same
to any person resident at or in charge of such place: or if there be no person
resident at or in charge of such place, or if such place be not within the local
limits of the jurisdiction of the Court, by causing such rule or proceeding to
be sent by post by a registered letter directed to such person at such place;
and if any such person shall neglect to make or cause to be made such entry,
then serviceyof such rule or proceeding may be effected by affixing a copy thereof
to some conspicuous part of the Court-house or in such manner as the Court
may direct.
XXXVI.. Aot VI of 1856 to h*vo effect In reepeet of certain speeifieitions
filed end oete done. — Act VI of 1856 shall be of the same force and effect ill
respect to every petition and specification filed under the provisions thereof
before the Act was repealed, and in regard to all proceedings consequent thereon
or in relation thereto and for the purpose of everything done under that Act
while it continued in force, as if previously to the passing of the said Act the
.sanction of Her Majesty to the passing thereof had been obtained and signified
in pursuance of the Statute passed in the seventeenth year of the reign aud
as if the said Act had not been repealed; and the term of every exclusive
privilege obtained under the said Act is hereby extended and shall continue
until the expiration of fourteen years from the time of the passing of ibis
Act. No exclusive privilege obtained under the said Act by an importer not being
the actual inventor shall cease to have effect by virtue of the provisions of
Section XVI of the said Act, if the invention be put in practice in India within
the period of two years from the time of the passing of this Act.
XXXVII. Stamp on petition. — Every petition for leave to file a specifica-
tion under the provisions of this Act, or for the extension of the term of an
exclusive privilege shall be written on printed or stamped paper of the value
of one hundred rupees,
APPENDIX IV
98?
XXXVIII. Interpretation. — In the construction of this Act, the following
words and expressions shall have the meanings hereby assigued to them, unless
there be something in the subject or context repugnant to such construction.
Number. — Words importing the singular number shall include the plural
number, and words importing the plural number shall include the singular
number.
Gender. — Words importing the masculine gender shall include females.
41 Invention." — The word “ invention " shall include an improvement.
41 Manufacture." — The word 44 manufacture ” shall be deemed to include
any art, process, or maimer of producing, preparing, or making ail article, and
also any article prepared or produced by manufacture.
44 Printed . 14 — The word 44 printed 44 shall include 44 lithographed."
44 Inventor 41 and 44 aetual inventor. 41 — The words 44 inventor " and
“ actual inventor ” shall include the executors, administrators, or assigns of an
inventor or actual inventor as the case may he.
14 Ateigne."— The word “ assigns " shall include grantees oi the sole use
or benefit in India of an invention or of the sole use of an exclusive privilege for
a limited time.
44 India." — The word *■ India " shall mean the territories which arc or may
become vested in Her Majesty by the Statutes 21 and 22 Vic. e. 106, entitled
“ Ail Act for the better Government of India.**
44 Governor-General-in-Council." — The words '* Uovemoi-Genoral-inCuuncil "
shall include the 44 President in Council. 41
44 Secretary to the Government of India.* 4 — The words ** Secretary to the
Government of India 44 shall include any Under Secretary to the said Government.
44 Her Majeety's Courts of Judicature . 4 4 4 4 Courts of Judicature.' 4 —' Tins
expressions 44 Her Majesty’s Courts of Judicature 44 and 44 Courts of Judicature ”
shall mean the Courts established by Hoyul Charter.
SCHEDULE OF FORMS.
Form of Petition (See Section I).
To The Governor-General of India in Council.
The Petition of (here insert name, addition, ami place of residence) for
leave to file a specification under Act No. XV of 1859).
.Showetli,
That your Petitioner is in possession of an invention for (state the title
of the invention) which invention lie believes will he of public utility; that he is
the inventor thereof (or, as the case may he, the assignee or the executor or
administrator of the inventor) and that the same is not publicly known or used
in India, or in any part of the United Kingdom of Great Britain and Ireland
to the best of his knowledge und belief.
The following is a description of the invention (here describe it).
Your Petitioner therefore prays for leave to file a specification of the
said invention pursuaut to the provisions of Act No. XV of 1859.
And your Petitioner, etc..
The
(.Signed)
day of
THE LAW OF PATENTS IN INDIA
UUA
<700
Form of Declaration to Aooompany Petition (See Section VII.)
1 (here insert name, addition, and place of residence) do solemnly and
sincerely declare that I am in possession of an invention for (state the title of
the invention as in the petition) ; that 1 believe the said invention ' will be of
public utility; that I am the inventor thereof (or, as the case may be, the
assignee or executor or administrator of the inventor) and that the same is not
publicly known or used in India or in any part of the United Kingdom of Great
Britain aud Ireland to the best rtf my knowledge and belief; and that, to the
best of my knowledge aud belief, my said invention is truly described in my
petition for leuve to file a specification thereof.
(Signed)
The day of
Form of Declaration to Accompany Specification (Sec Section VII).
I (here insert name, addition, and place of residence) do solemuly and
sincerely declare that I am in possession of an invention for (state the nature
of the invention) which invention 1 believe will he of public utility; that I am
the inventor thereof (or, as the* case may be. the assignee or executor or
administrator of the inventor) and that the same is not publicly known or used
in India or in any part of the United Kingdom of Great Britain and Ireland to
the best of my knowledge and belief; and that, to the host of my belief, the
instrument in writing under my hand hereunto annexed particularly describes
and ascertains the nature of the said invention and in what manner the same is
to be performed.
(Signed )
The day of
Form of Declaration by an Agent where an Inventor ie absent from India
(See Section VII).
1 of do solemnly and sincerely declare that I
have been appointed by the said his agent for the purpose of
; and I verily believe that the declaration purporting to be the
declaration of the said marked ( ) was signed by
him, and that the contents thereof are true.
(Signed)
The duy of
Form of Petition (See Section XX).
That your Petitioner (or, as the case may be. that A.B. of whom your
Petitioner is the assignee or executor) has obtained Hr*r Majesty's Letters Patent
dated the . day of for (state the title of the invention),
and that such Letters Patent are to continue in force for years. That
your Petitioner believes that the said invention is not now and lifts not hitherto
been publicly known or used in India.
The following is a description of the invention (here describe it).
Your Petitioner therefore prays for leave to file a specification of the said
invention pursuant to the provisions of Act No. XV of 1859.
And your Petitioner, etc.,
(Signed)
The
day of
APPENDIX IV
9B9
ACT NO. XIII OF 1872.
Pasted by the Governor-Central of India In Gouneil.
(Deceived the assent of His Excellency the Governor-General on tlm
26th April, 1872).
AN ACT TO AMEND ACT XV OF 1859.
Preamble. — Whereas, by the Act XV of 1859, provision was made for the
grant of certain privileges to the inventors of new manufactures ; and whereas
it is desirable thut provision should he made for the grant of similar privileges
to the inventors of new patterns and designs in British India ; it is hereby
enacted as follows: —
1. Extent. Commencement.— 1 This Act may he called “ The Patterns and
Designs Protection Act, 1872 ”: It extends to the whole of British India, and
shall come into force on the passing thereof.
2. Addition to See. 1 of Aet XV of 1859. 11 New manufacture " defined.—
At the end of Section 1 of the said Act XV of 1859, the following shall he
read: — “For the purposes of this Act. ‘New manufacture’ shall he deemed
to include any new and original pattern or design, or tile application of such
pattern or design to any substance or article of manufacture.”
3. Addition to See. IV of laid Act. — At the end of Section IV of the
said Act , the following shall he read : - “ Provided that, in the case of a pattern
or design or the application thereof to any substance or article of manufacture,
such privilege shall he granted for the term of three years and no more.”
4. Persons invested by English law with rights as to patterns and
designs to have seme rights in British India.— After Section XXXVll of the
said Act, the following shall he read Whenever, by any law for the time
beiug in force in the United Kingdom, any person entitled in the United
Kingdom to an exclusive right in any pattern or design or in the application
of such pattern or design to any substance or article of manufacture, such
person shall he entitled in British India to the sole and exclusive right in such
pattern or design, or in such application thereof, and shall be entitled in
British India to the same civil remedies in respect of any infringement thereof
in British India, as those to which he would he entitled in the United Kingdom
in respect of an infringement thereof in the United Kingdom.”
5. Ad to be read as part of Act XV 1559.— This Act shall he read with
and as part of the said Act XV of 1859.
900 THE LAW OF PATENTS IN INDIA
ACT NO. XVI OF 1883.
Passed by the Governor-General of India in Council.
(Kcccivcd the assent of the Governor-General on the 4th October, 1885.)
AN ACT FOR THE PROTECTION OF INVENTION* EXHIBITED
IN THE EXHIBITION* OF INDIA.
Whereas it is expedient that such protection as is hereinafter mentioned
should be afforded to the inventors of new manufactures who are desirous of
exhibiting them- at Exhibitions tube held in India; it is hereby enacted as
follows : —
1. Short Title. — (1) This Act may be called the Protection of Inventions
Act, 1883.
(2) Commencement. — And it shall come into force at once.
2. Aet to be read with Aot XV of 1059 .— It shall be read with, and
taken as part of, Act XV of 1859 (for granting exclusive privileges to inventors).
3. Inventions exhibited when to be deemed new though publicly used
or made publicly known. — If. within six months from the time of the opening
of an Exhibition, a person, being the inventor and exhibitor of any manufacture
exhibited at that Exhibition petitions the Governor-General-in-Council uuder
Act XV’ of 1859, for leave to file a specification of his invention, the circumstance
that the invention has at any time after the opening of the Exhibition bccu
publicly used or made publicly known shall not prevent the invention being
deemed to have been at the time of presenting the petition a new invention
for the purposes of the said Act.
4. Meaning of term 11 Exhibition.’’— In this Act, “ Exhibition ” means
the International Exhibition to be held in the years oue thousand eight hundred
and eighty-three and one thousand eight hundred and eighty-four at Calcutta
and any Exhibition to be held in India which the Governor-General-in-Council
may on the application of any persons desirous of holding the Exhibition
by notification in the “Gazette, of India,” declare to be, in the judgment of the
Governor-Goneral-in-C'Oiincil, calculated to promote Indian art or iudustry,
and to prove beneficial to the mercantile, agricultural or industrial classes of
Her Majesty’s subjects in India.
APPENDIX IV
991
ACT NO. V OF 1888.
Pamtf by tfti Governor-General of India In Counoll.
(Received tlie assent of the Governor-General on the 16th March, 1888.)
AN ACT TO CONSOLIDATE AND AMEND THE LAW RELATING TO THE
PROTECTION OF INVENTIONS AND DESIGNS.
Whereas it is expedient to consolidate and amend the law relating
to the protection of inventions and designs; It- is hereby enacted as follows: —
1. Title, extent and eommenetmm.— (1) This Act may he called the
Inventions and Designs Act, 1888.
(2) It shall extend to the whole of British India.
(3) It shall come into force on the first clay of July 1888.
2. Repeal.— (1) The enactments described in the first schedule are hereby
repealed to the extent specified in the third column thereof.
(2) But this repeal of enactments shall not affect any exclusive privilege
acquired, or any conditions or restrictions imposed with respect to any such
privilege, or any right or liability accrued or incurred, under any of those
enactments before the commencement of this Act, or any relief in respect of
any such privilege, right or liability.
(3) Any enactment or document referring to any enactment hereby
repealed shall he construed to refer to this Act or to the corresponding portion
thereof.
3. Division of Act into Parts. — -The remainder of this Act is divided into
Parts, as follows: —
Part I— INVENTIONS.
Part TI— DESIGNS,
PART I.
INVENTIONS.
4. Definitions. — In this Part, unless there is something repugnant in
the subject or context: —
(1) “Invention” includes an improvement:
(2) “inventor” does not include the importer into British India of a.
new invention unless he is the actual inventor:
(3) “ applicant ” means a person who has applied under t his I 'art for
leave to file a specification of an invention, whether lie has tiled the
specification or not:
( 4 ) » assign ” includes a grantee of the exclusive privilege of making,
selling or usin£ an invention, or of authorizing others so to do, during the
term for which the privilege is to continue or may be extended, nr for any
shorter term :
(5) “ inventor, ” “ actual inventor ” and “ Applicant ” include the
executors, administrators or assigns of an inventor, actual inventor ami applicant,
as the case may be:
(6) “ manufacture ” includes any art, process or manner of producing,
preparing or making an article and also any article prepared or produced by
manufacture :
(7) “ write ” includes print, lithograph, photograph, engrave, and every
other mode in which words or figures can be expressed on paper or on any
substance :
(8) “ Secretary ” means a Secretary to the Government of India appointed
by the Governor-General-in-Council to discharge the functions of the Secretary
under this Act, and includes any under-secretary, assistant-secretary or other
offiw subordinate to the Government of Tndia to the extent to which such
' 992 THE LAW OF PATENTS IN INDIA
officer may l>e authorized by general or special order ol the Governor-General-
in-Council to discharge any of those functions :
(9) XIV Of 18*2.—“ District Court 99 has the meaning assigned u> that
expression hy the Code of Civil Procedure: and
(10) X Of 1882. — “ High Court ” lias the meaning assigned to ihal
expression by the Code of Criminal Procedure, 1882, in reference to proceedings
against European British subjects.
5. Applloation for leave to file specification.— (1) The inventor of a new
manufacture, whether he is a British subject or not, may apply to the Governor*
Geiiernl-in-Couiicil for leave to file a specification thereof.
(2) The application must be in writing signed by the applicant and in
the form or to the effect of the second schedule if the inventor has not obtained
a patent in the United Kingdom, and in the form or to the effect of the third
schedule if he has obtained a patent in the United Kingdom.
(3) It must state the name, occupation address of the applicant, and,
where a patent has been obtained in the United Kingdom, the date of the
patent and the date of the actual sealing thereof, and must describe with
reasonable precision and detail the nature of the invention, and of the particular
novelty whereof it consists, and he supplemented hy such further particulars
relating to the invention, and by such drawings or photographs illustrative
thereof, as the Governor-General-in-Council may see fit to require from the
applicant.
(4) If in any case it appears to the Governor General-in Council that
an application ought to he further supplemented by a model of anything
alleged to constitute an invention, he may require the applicant to furnish
such a model neatly and substantially made of durable material and of
dimensions not exceeding those, if any, specified in the requisition therefor.
6. Order to file specification.— (1) Upon an application under the last
foregoing Section the Governor-General-in-Council may. after such inquiry as
lie thinks fit, make an order authorizing the applicant to file a specification
of the invention.
(2) Before making nu order under subsection (1), the Governor-General -
in-Council may direct that the application he referred ior inquiry and report,
to any person whom he thhiks fit.
(3) When such enquiry and report are made hy a person who is not
in the service of the Government, there shall be payable to that person by the
applicant such fee as the Governor-General-in Council, after considering the
report, may determine.
(4) When an application is to be referred to such a person, the applicant,
shall deposits in such pluce and within such time us the Govenior-Generni-
in-CYmncil may hy rule or otherwise prescribe, such sum as will, in the opinion
of the Secretary, he sufficient to defray any fee which is likely to he determined
under sub-section (3).
(5) If the sum is not deposited in the place and within the time
proscribed, the application may be rejected.
(6) If the fee as determined by the Governor-General-in-Council exceeds
the sum so deposited, an order shall not he made under sub-section (1) until
the applicant has paid the balance of the fee.
(7) If the sum deposited exceeds the fee so determined, the excess shall
he refunded to the applicant.
7. Applications In respect of contemporaneous Inventions. — (1) if two
or more inventors apply on the same day for leave to file specification* of
inventions which appear to the Governor-General- in-Council to be identical
or so similar as to be practically identical, the Governor-General-in-Council
may, in his discretion, authorize both or all the applicants, subject to the
other provisions of this Part, to file specifications of their respective inventions
(2) If they apply on different days for leave to file specifications of such
inventions as aforesaid, the applicant who applied on the first of the different
days shall be deemed to have preferential claim to an order authorizing the
filing of his specification, ?
APPENDIX IV
093
8. Acquisition mil oontlnutnoo of oxoluolvo prlvllogo.— (1) If within
six months from the date of an order under Section 6, sub-section (1) , or
within such further time, not exceeding three months, as the Governor-General-
in-Council, in his discretion, may, on cause shown to his satisfaction and on
payment of the fee prescribed in that behalf in the fourth schedule, see fit to
allow, the applicant causes a specification of his invention to be filed in manner
by this Part required, and the fee prescribed in the fourth schedule in respect
of t lie filing of the specification to be paid, the applicant shall, subject to the
other provisions of this Part, be entitled to the exclusive privilege of making,
selling and using the invention in British India and of authorizing others so to
do, for a term of fourteen years from the date of the filing of the specification.
(2) But an exclusive privilege in respect of an invention of a new
manufacture shall, notwithstanding anything in sub-section (1), cease if the
inventor fails to pay, within the time limited in that behalf by the fourth
schedule, any fee prescribed in that schedule in respect of the continuance of
the privilege.
(3) If, nevertheless, in any case, hy accident, mistake or inadvertence,
an inventor fails to pay any such fee within the time so limited, he nmy apply
to the Governor-General-in-Council for an enlargement of the time for making
the payment.
(4) Thereupon the Governor-General-in-Council may enlarge the time
accordingly, on payment of the fee prescribed in that behalf in the fourth
schedule and subject to the following conditions, namely: —
fa) The time for making a payment shall not in any ease he enlarged
for more than three months; and
(b) if any suit is instituted in respect of an infringement of exclusive
privilege committed after a failure to make a payment within
the time limited for the making thereof and before the enlarge-
ment. of that time, the Court, disposing of the suit may, if it
thinks fit. refuse to award or give any damages in respect of
the infringement.
a Form and oontants of speeifleatlon.— (1) A specification filed under
this Pail must he in writing signed hy the applicant, and must set forth the
precise invention in respect of which the applicant claims to become entitled
to an exclusive privilege.
(2) If the specification is of an invention which is an improvement only,
it must hy explicit language distinguish between what is old and what is
claimed? to be new.
(3) Every specification must explain the principle of the invention set
forth therein and the best mode in which the applicant has contemplated
applying that principle, and must describe the manner of making and using
the invention in *such full, clear, concise and exact terms as to enable any
person skilled in the art or science to which the invention appertains, or with
which it is most closely connected, to make or use the same.
10. Mode of filing application and tpao (float ion.— Every application for
leave to file a specification and every specification filed under this Bart, must
he left with, or sent by post to, the Secretary, and the date of the delivery
or receipt thereof shall he endorsed thereon and recorded in his office.
11. Delivery and distribution of oopies of epeoiflestlofi.— (1) At the time
of delivering or sending the specification for the purpose of its being filed, the
applicant shall cause to be delivered or sent therewith to the Secretary as
many 'copies thereof, not being fewer than four, as may be required by the
Rules for the time being in force under this Part.
(2) One of these copies shall be retained hy the Secretary, and one sliull
be sent to the Governor of Fort St. George in Council, one to the Governor
of Bombay in Council, one to the Chief Commissioner of Burma, and the others,
if any, to such authorities as the Governor-General-in-Council may appoint
in this behalf.
(3) The copies of the specification which are sent under sub-sect ion (2)
to the authorities mentioned or referred to in that, sub-section shall he open
to the inspection of any person at all reasonable times at places to lie nppoij^ed
hy those authorities.
125
THK LAW OF PATENTS IN INDIA
12. Register of Inventions. — (1) A book, to be called the register of
inventions shall be kept in the office of the Secretary wherein shall be entered
and recorded every application for leave to file a specification, every order made
on any such application, every specification filed in pursuance thereof, and every
subsequent proceeding relating to the invention described therein.
(2) Applications for leave to file a specification shall be numbered
consecutively in the order in which they are delivered or received, and be dated
as of the rfay of their delivery or receipt, and shall be entered in the register
of inventions in the order of their respective numbers.
(3) A reference shall be made in that register, in the margin of the entry
of each application, to every order on or in respect of the application, to the
specification, if any, filed in pursuance thereof, and to every subsequent
proceeding relating to the invention which forms the subject of the application.
13. Addrost-bOOk. — (1) Another book, to be called the address-book, shall
he kept in the office of the Secretary wherein any person filing a specification
under this Part, or any person in whom an exclusive privilege acquired under
this Part, or any share or interest therein, may become vested, may from time
to time cause to be stated some place in British India where notice of any rule
or proceeding relating to the exclusive privilege may be served on him.
(2) A reference to each entry in the address-book shall be made in the
register of inventions in the margin of the entry in that register of the
application for leave to file the specification.
14. Provisions with respect to the register and book.— (1) Every entry
in the register of inventions or address-book and every document entered and
recorded in the register, shall, for the purposes of the law of evidence for the
time being in force, be deemed to be a public document and shall be open to
the inspection of any person at all resonable times at the office of the Secretary.
(2) The books kept under Section 11 and Section 35 of Act No. XV
of 1859 (an Act for granting exclusive Privileges to Inventors) shall be deemed
to he parts of the register of inventions and address-book, . respectively.
15. Extension of exolusive privilege. — (1) The inventor of a new manufac-
ture may, at any time not more than one year and not less than six months
before the time limited for the expiration of an exclusive privilege acquired
under Section 8, apply to the Governor-General in-Council for an extension of
the privilege for a further term.
(2) Wheu ail application is made under sub-section (1) the Governor-
Gcneral-in-Council may, if be thinks fit, refer it to a High Court for report.
(3) The Court to which the application is referred shall, in making its
report, have regard to the nature and merits of the invention in relation to
the public, to the profits made by the inventor as such, and to all the
circumstances of the case.
(4) The procedure on the reference shall be such as the Court thinks
fit, and may include the issue of citations calling upon persons claiming to have
any interest in the reference to appear before the Court on the day on which
the reference is to be considered, or on any day to which the consideration
thereof may he adjourned, and make with respect thereto any representation
which they may see fit in relation to any of the matters to which the Court is
required by the last foregoing sub-section to have regard in making its report.
(5) If the Governor-General-in-Council is of opinion or where a reference
has been made under sub-section (2) , if the Court reports that the inventor
has been inadequately remunerate! by his exclusive privilege, the Governor-
General-in-Council may. on payment of the fee prescribed in that behalf in the
fourth schedule, make an orner extending the term of the privilege for a further
term not exceeding seven or, in exceptional cases, fourteen years from the
expiration of the first term of fourteen years.
(6) But an exclusive privilege of which the term has been extended
under the last foregoing sub-section shall, notwithstanding anything in that
sub-section, cease if the inventor fails to pay before the expiration of each year
of such extended term the fee prescribed in the schedule aforesaid in respect
of the continuance of the privilege.
APPENDIX tV
16. Imposition of conditions with respeot to exclusive privilege. An
order under Section 6, sub-section (1), authorizing the filing of a specification,
or under Section 15, sub-section (5) extending the term of an exclusive privilege,
may be made subject to such conditions as the Governor-Gencral-in Council
thinks expedient.
17. Exclusive privilege to bind the Government.-- (1) Subject to any
conditions imposed under the last foregoing section—
(r/.) with respect to the filing by a person employed in the service of
Her Majesty in India, of the specification of a manufacture
invented by him in the course of his employment, or
(5) with respect to the extension, in favour of any person, of the
term of an exclusive privilege,
an exclusive privilege acquired under this Part shall have to all intents
the like effect as against Her Majesty as it has against a subject.
(2) But the officers or authorities administering any department of tins
service of Her Majesty may. be themselves their agents, eon tractors or others,
at any time after the delivery or receipt of the application for leave to file the
specification of an invention, use the invention for the services of the Government
on terms to he before or after the use thereof agreed on, with the approval of
the Governor-General in Council between those officers or authorities and the
inventor, or. in default of such agreement, on such terms as may be settled
by the Governor-General iu-Council.
18. Application for leave to file memorandum or amended specification.—
(1) If, after the filing of the specification, the applicant has reason to believe
that through mistake or inadvertence hu has erroneously made any mis-statement
in his application or specification or included therein something which at the
date of the delivery or receipt of his application was not new or whereof lie was
not the inventor, or that the specification is in any particular defective or
insufficient, he may apply to the Governor-General-in Council for leave to file
a memorandum pointing out the mis-statement or disclaiming any part of the
alleged invention, or for leave to file an amended specification, as the case may
be.
(2i The application must he in writing signed by the applicant, and
must state how the error, defect or insufficiency occurred and that it was not
fraudulently intended.
(3) Upon the application the Goveriior-General-in-Council may make an
order allowing the memorandum or amended specification to he filer!.
(4) The provisions of Section 6, with respect to applications, and of
Sections 9 and 11 with respect to specifications shall apply, so far as they can
be made applicable, and copies thereof, to applications and to amended
specifications, respectively, made and filed under this section.
19. Effect of amended specification. — An amended specification filed under
the last foregoing section shall, except as to any suit or proceeding relating
to the exclusive privilege which may he pending at the time of the filing of the
amended specification, have the same effect as if it had been the specification
first filed:
Provided that nothing in an amended specification shall he construed to
extend or enlarge ail exclusive privilege before acquired.
20. Bar to exclusive privilege in oertaln cases.— A person shall not he
entitled to an exclusive privilege under this Part -
[a) if the invention is of no utility, or
(b) if the invention, at the date, of the delivery or receipt of the
application for leave to file the specification thereof, was not a
new invention within the meaning of this part, or
(r) if the applicant is not the inventor thereof, or
(r/) if the original or any amended specification does not fulfil the
requirements of this Part, or
(e) if the original or any subsequent application relating to the
invention or the original or any amended specification contains
a wilful or fraudulent mis-statement, or
996
THE LAW OF PATENTS IN INDIA
(/') if the application for leave to file the specification of tlie
invention was made under this Part after the expiration of
one year from the date of the acquisition of an exclusive
privilege in respect of the invention in any place beyond the
limits of British India and the United Kingdom.
21. Novelty of Invention dependent on publfe use or knowledge thereof
before application to file specification. — An invention shall be deemed a new
invention within the meaning of this Part if it has not before the date of the
delivery or receipt of the application for leave to file the specification thereof
been publicly used in any part of British India or of the United Kingdom, or
been made publicly known in any part of British India or of the United Kingdom
by means of a written publication.
22. Effeot of publle use or knowledge of invention in fraud of invention.—
The public use or knowledge of an invention before the date of the delivery
or receipt of the application for leave to file a specification thereof, shall
not lie deemed a public use or knowledge within the meaning of this Part if
the knowledge has been obtained surreptitiously or in fraud of the inventor
or has been communicated to the public in fraud of the inventor or in breach
of confidence.
Provided that the inventor has not acquiesced in the public use of his
invention, and that, within six months after the commencement of that use, he
applies for leave to file a specification.
23. Effeot of temporary uee of Invention in publle by inventor or by his
leave. — Use of an invention in public by the inventor thereof or by his servant
or agent, or by any other person by iiis licence in writing for a period not
exceeding one year immediately preceding the date of the delivery or receipt
of his application for leave to file a specification thereof or knowledge of the
invention resulting from such use thereof in public, shall not be deemed a
public use or knowledge within the meaning of this Part.
24. Effeot of public use or knowledge of patented invention between
application for patent and application to file specification.— If an inventor who
has obtained a patent for his invention in the United Kingdom causes an
application for leave to file a specification of the invention under this Part to
be delivered or received by the Secretary within twelve months from the date of
the actual sealing of the patent, the invention shall be deemed a new invention
within the meaning of this Part if it was not publicly used or known in any
part of British India at or before the date of the application for the patent
notwithstanding that it may luive been publicly used or known in some part
of British India or of the United Kingdom before the date of the delivery or
receipt of the application under this Part for leave to file the specification.
25. Effect of like public use or knowledge of unpetented invention .—If
an inventor applies for leave to file a specification under this Part while his
application for a patent is pending in the United Kingdom, and the interval
between the date of his application for the patent and the date of the delivery
or receipt of his application under this Part does not exceed twelve months,
the invention shall not be deemed to have been publicly used, or made publicly
known, within the meaning of ibis Part, by reason only of the invention having
been used, or a description thereof having been published, in any part of British
India or of the United Kingdom during the interval.
26. Effeot off public use or knowledge of invention after admission to an
axhibltlon. — If an inventor, being the exhibitor of his invention at an industrial
or international exhibition, certified as such by the Governor<Oeuerul-in-Council,
causes an application for leave to file a specification of the invention to be
delivered to or received by the Secretary within six months from the date of
the admission of the invention into that exhibition, the invention shall not be
deemed to have been publicly used, or made publicly known, within the
meaning of this Part, by reason only of the invention having at any time
after admission into exhibition been publicly used or made publicly known.
a1>pb!ndix tv
dd?
27. Cassation of axolusiva privilege by order of tha Government.— (1) An
exclusive privilege acquired under this Part shall cease if the Governor-General-
in-Couucil declares the privilege, or the mode in which it is exercised to be
mischievous to the State, or generally prejudicial to the public.
(2) It shall also cease if a breach of any condition on which the applicant
was authorized to file a specification, or on which the term of the exclusive
privilege was extended, is on an application under this Part to a High Court
proved to the satisfaction of that Court, and if the Governor-Oeneral-in-Council
thereupon declares the privilege to have ceased.
28. Cassation of axolusiva privilege on revocation or expiration of Patent.—
(1) An exclusive privilege acquired under this Part in respect of an
invention for which a patent has been obtained in the United Kingdom shall
cease on the revocation or expiration of the patent.
(2) Such a privilege in respect of an invention for which a patent hus
not been obtained in the United Kingdom shall cease on the revocation or
expiration of any: patent or exclusive privilege which has been obtained or
acquired for or in respect of the invention in any other country.
20. Suit for Infringement of exclusive privilege.— (1) An inventor may
institute a suit in the District Court against any person who, during the
continuance of an exclusive privilege acquired by him under this Part in respect
of an invention, makes, sells or uses the invention without his licence, or
counterfeits or imitates it.
(2) The suit shall not be defended upon the ground of uny drfect or
insufficiency of the specification of the invention or upon the ground that the
original or any subsequent application relating to t lie invention, or the original
or any amended specification, contains a wilful nr fraudulent mis-statement, or
upon the ground that the invention is of no utility:
(3) Nor shall it be defended upon the ground that the plaintiff was not
the inventor, unless the defendant shows that he himself is the actual inventor
or has obtained from the actual inventor a right to make, sell or use the
invention, or imitate it as the case may be:
(4) Nor shall it be defended upon the ground that the invention was not
new, unless the defendant, or some person through whom he claims, has, before
the date of the delivery or receipt of the application for leave to file the
specification, publicly or actually used in some parts of British India or of the
United Kingdom the invention or that part of it with respect to which the
exclusive privilege is alleged to have been infringed.
30. Application to deolare exclusive privilege in respect of an invention
not to have been acquired. — Any person may apply to a High Court for a rule
to show cause why the Court should not declare that ail exclusive privilege in
respect of an invention to be specified in the rule has not been acquired under
this Part by reason of all or any of the objections following (to be specified in
the rule), that is to say: —
[ft) that the invention is of no utility, or
(/>) that the invention was not, at the date of the delivery or receipt
of the application for leave to file the specification, a new
invention within the meaning of this Part, or
(r) that the applicant was not the inventor thereof, or
('/) that the original or any amended specification does not fulfil the
requirements of this Part, or
('■) that the applicant has knowingly or fraudulently included in the
application for leave to file the specification, or in the original
or any amended specification as part of his invention, something
which was not new or whereof he was not the inventor, or
(f) that the original or any subsequent application relating to the
invention, or the original or any amended specification contains
a wilful or fraudulent mis. statement, or
('/) that some part of the invention, or the manner in which that
part is to he made and used as described in the original or any
amended specification, is not thereby sufficiently described, and
that this insufficiency was fraudulent and is injurious to the
public.
Mb I’HE Law of pATenI'S in lMt)lA
31. Like application at to part Of an invention.— Any person may apply
to a. High Court for a rule to show cuuse why the Court should not declare that
mi exclusive privilege in respect of any part of an invention to be specified
in the rule has not been acquired under this Part, by reason of all or any of
the objections following (to be specified in the rule), that is to say: —
(a) that that part of the invention is wholly distinct from the other
parts thereof and is of no utility, or
(0) that that part of the invention was not, at the dute of the delivery
of receipt of the application for leave to file the specification,
a new invention within the meaning of this Part, or
(r) that the applicant was not the inventor of that part of the
invention, or
(<l) that that part of the invention, or the manner in which it is to
be made and used, is not sufficiently described in the original
or any amended specification, and that this insufficiency is
injurious to the public.
32. XIV of 1'802. Security for oocts of application under either of the
two last foregoing Seotions. — The High Court may, irrespective of any provisions
of the Code of Civil Procedure in this behalf, require, a person applying for a.
rule under either of the two last foregoing iSectmns to give security for the
payment of all costs incurred or likely to be incurred by any person appealing
to show cause against the rule.
33. Application on breaoh of condition.— (1) Any person authorized by
the Governor-General- in-Council in this behalf may apply to a High Court for
a rule to show cause why the question of the breach of any condition on which
leave to file a specification has been granted, or any other question of fact on
which the cessation of an exclusive privilege uiukir Section 27 may, in the
judgment of the Governor-General in-Council, depend, should not he tried in the.
form of an issue directed by the Court.
(2) If the rule is made absolute, the Court unless the breach or other
matter of fact is admitted, may direct the issue to be tried and certify the
result of the trial to the Governur-Geiieral-in Council.
34. Notice of proceedings to persons interested.— (1) Notice of any rule
obtained or proceeding taken under Section 30, Section 31 or Section 33 shall
be served on all persons appearing from the address-book to be proprietors of
tho exclusive privilege, or to have shares or interests therein, and it shall not
be necessary to serve the notice on any other person.
(2) The notice shall be deemed to be sufficiently served if a copy
thereof is left at the place for the time being stated in the address-book, by
delivering the ropy to any person resident at or in charge of the place or,
if there is no person resident at or in charge of the place, or if the place is
not within the local limits of the jurisdiction of the Court, by causing the
notice, to he sent to the place by post by a registered letter directed lo the
person to whom the notice is addressed.
35. Framing Issue for trial before other Court.— (1) The High Court
may, if it thinks fit, direct an issue for the trial, before itself or any other
High Court, or any District Court, of any question of fact arising upon an
application under Section 30, Section 31 or Section 33, and the issue shall be
tried accordingly.
(2) If the issue is directed to another Court, the finding shall be certified
by that Court to the Court directing the issue.
(3) If the issue is directed to a District Court, the finding of that Court
shall not be subject to appeal, but the evidence taken upon the trial shall be
recorded, and a copy thereof, certified by the Judge of the Court, shall be
transmitted, together with any remarks which he may think fit, to make thereon,
to the High Court, and the High Court may thereupon act upon the finding
of the District Court, or dispose of the application upon the evidence recorded,
or direct a new trial, as the justice of the case may require.
36. Order on application. — (1) If it appears to the High Court at the
hearing of an application under Section 30 or Section 31 that by reason of
any of tlie objections specified in the rule, the exclusive privilege in the
APPENDIX IV
invention or in any part thereof lias not been acquired, the Court- shall make
an order accordingly, and thereupon the applicant shall, so long as the Order
continues in force, cease to be entitled to the exclusive privilege.
(2) If it appears to the High Court, at the hearing of any such applica-
tion as last- aforesaid, that the applicant lias, in the description of his invention
in the application for leave to file a specification thereof or in the original
or any amended specification, erroneously included something which at the
date of the delivery or receipt of the application for leave to file the specifica-
tion was not new or whereof he was not the inventor, or that the specification
is in any particular defective or insufficient, but that the error, defect or
insufficiency was not fraudulently intended, the Court may adjudge the exclusive
privilege to have been acquired and to he valid save as to the part thereof
affected by the error, defect or insufficiency: or
(3) If it appears to the High Court that the error, defect or insufficiency
can be amended without injury to the public, the Court may adjudge the
exclusive privilege in respect of the whole of the invention to )>e valid, and
may, upon such terms as it thinks reasonable, order the specification to be
amended in any particular in which it is erroneous, defective or insufficient;
and thereupon the applicant shall, within a time to be limited by the Court
for the purpose, file in the office of the Secretary a specification amended
according to the order.
(4) The provisions of Section 18 with respect to the distribution and
disposiil of copies of amended specifications and of Section 19 with respect to
-the effect of such specifications, shall apply, so far as they cun be made
applicable, to an amended specification filed under this Section.
(5) An exclusive privilege in respect of an invention shall not be defeated
upon the ground that the application for leave to file the specification of
the invention contains a mis-statement, unless the mis-statement was wilful
or fraudulent.
37. Delivery of particulars.— (1) In a suit for the infringement of an
exclusive privilege acquired under this Part the plaintiff shall deliver with his
plaint particulars of the breaches complained of in the suit, and the defendant
shall deliver a written statement of the particulars of the grounds, if any, upon
which he means to contend that the plaintiff is not entitled to an exclusive
privilege in respect of the invention.
(2) In like manner upon an application to a High Court under
Section 30, Section 31 or Section 33, the person making the application shall
deliver particulars of the objections or grounds on which be means to rely.
(3) At the hearing of any such suit or application, or at the trial of
any issue arising out of any such application, evidence shall not be allowed
to be given in proof of any breach of the exclusive privilege, or of any ground
impeaching the validity of that privilege, or of any objection or ground affecting
such a privilege, unless such breach or other matter as aforesaid has been stated
in the particular* delivered under this Section.
(4) If it is alleged that the invention was publicly used or known before
the date of the delivery or receipt of the application for leave to tile the
specification thereof, the places where and the manner in which tin* invention
was so publicly used or known shall he stated in tin* particulars.
(5) Not withstanding anything in the foregoing portion of this Section,
the Court in which the suit or application is pending, or an issue arising out
of the application is being tried, may allow the plaintiff or defendant respectively
to amend the particulars delivered under this section upon such terms as it
thinks fit.
38. Title of actual Inventor to exclusive privilege in ease of fraud.— If.
in a suit instituted in the District Court at any time within fourteen years
from the date of the filing of a specification of an invention under this Part,
the Actual inventor proves to the satisfaction of the Court that- the applicant
was not the actual inventor, and that at the time of the application for leave
to file the specification the applicant knew or had reason to believe that the
knowledge of the invention was obtained by himself or by some other person
surreptitiously or in fraud of the actual inventor, or by means of a communica-
tion made in confidence by the actual inventor to him or to any person through
1000 THE LAW OF PATENTS IN INDIA
whom he derived the knowledge, the Court may make a decree declaring an
exclusive privilege in respect of the invention to be vested, subject to the other
provisions of this Part, in the actual inventor for a term of fourteen years from
the date on which the specification was filed, and requiring the applicant to
account for and pay over to the actual inventor the profits derived by him
from the invention or so much of those profits as the Court, having regard to
the degree of diligence exerted l>y the actual inventor in proceeding under this
Section and to all the other circumstances of the case, may see fit to require
the applicant to pay.
38. Transmission of oopiss of dooreo and orders to Soerotary. — A Court
making a decree in a suit under Section 29 or Section 38, or an Order on an
application under Section 30, Section 31 or Section 33, shall send a copy of the
decree or Order, as the case may toe, to the Secretary, who shall cause, an entry
thereof and reference thereto to be made in the register of inventions and
against any entry in t he address-hook affected thereby.
40. Registration of oessation of cxolusive privilege.— In the following
cases, namely: —
(a) when an exclusive privilege acquired under this Part lias ceased
under Section 8 or Section 15 by reason of a fee in respect of
the continuance of the privilege not having been paid within
the time limited by the fourth schedule for the payment thereof,
and the period, if any, within which an Order might have been
made for enlarging the time for the making of the payment
has expired ;
(h) when an exclusive privilege acquired under this Part has been
declared by the Oovernor-Oeneral-in-Council under Seel ion 27
to have ceased ;
(r) when an exclusive privilege acquired under this Part has ceased
under Section 28 by reason of the revocation or expiration of a
patent or exclusive privilege;
((/) when the whole or any part of an exclusive privilege acquired
under this Part has ceased under Section 36 in consequence of
ail order under that section;
(e) when an exclusive privilege has been declared by a decree to have
vested in an actual inventor under Section 38;
(/*) when an exclusive privilege acquired under this Part has ceased by
reason of the expiration of the term for which it was acquired ;
the Secretary shall cause an entry with respect to the cessation or venting
of the exclusive privilege to be made in the register of inventions, ami a reference
to that entry to lie made in the margin of the entry in that register of the
application for leave to file the specification of the invention.
41. Reotifioetion of register of invention! or eddrees*Aook.— (1) If any
person is aggrieved by an entry in the register of inventions or address-book,
or by the omission of an entry therefrom, and a proceeding is not provided in
the foregoing portion of this Part whereby the register or book may be rectified,
lie may apply to u High Court, for an order for the rectification of the register
or hook, and that Court may make such Order on the application as it thinks fit.
(2) A copy of the Order shall be forwarded by the Court to the
Secretary, who shall cause an entry thereof and reference thereto to be made
in the register of inventions and against any entry in the address-book affected
thereby.
(3) When the Secretary is n party to an application under this Section,
the costs of another party thereto shall not be adjudged to be payable by the
Secretary.
42. Power to Higti Court to stay proceeding! on or dlimiti certain
•ppliettione. — A High Court to which an application has been made under
Section 30, Section 31 and Section 33 or Section 41 may stay proceedings on.
or dismiss, the application if in its opinion the application would be disposed
of more justly or conveniently by another High Court,
APPENDIX IV
1001
43. Power for Govornor-QeneraMn-Couneil to require grant of lioenoee.— -
If on the petition of any person interested it is proved to the Governor-General-
in-Council that, by reason of an inventor who Jias acquired an exclusive privilege
under this Part failing to grant licences on reasonable terms: —
[a) the exclusive privilege is not being worked in British India; or
(h) the reasonable requirements of the public with respect to the
invention cannot be supplied; or
(c) any person is prevented from working or using to the best
advantages an invention of which he is possessed;
the Governor-General-in-Council may order the inventor to grant or may
himself on behalf of the inventor grant licences on such terms as to the amount
of royalties, security for payment, or otherwise, as the Governor-General-iu-
Council, having regard to the nature of the invention and the circumstances
of the case, may deem just.
44. Assignment for psrtloulsr pisses. — Any person for the time being
entitled to an exclusive privilege under this Part, or to any share or interest
in such a privilege, in any local area may, subject to the conditions of his
title thereto, assign the privilege or such share or interest, as the case may
be, for any place in or part of that local area.
45. Subscription of spoelftoatlons and applications.— If an applicant is
absent from British India, an application for leave to file a specification, or a
specification, or an application for leave to file a memorandum or amended
specification, may, instead of being signed by the applicant under Section 5.
Section 9 or Section 18, as the) case may be, be signed on behalf of the applicant
hv an agent in British India authorized by him in writing in that behalf.
46. Verification of application. — (1) An application under this Part for
leave to file a specification, memorandum or amended specification must be
verified by the person making the application.
(2) If that person is absent from British India, the application may
be verified by the agent who signs the application on his behalf.
(3) The verification must be signed by the person making it, and must
be to the effect that the facts stated in the application are true to his knowledge,
except as to matters stated on information and believes them to be true.
47. Agents. — Subject to the provisions of the two lust foregoing Sections
and of any other enactment for the time being in force any act which is
required or authorized by this Part to be done by any person may be done
on his behalf by an agent in British India having authority in writing from
that person so to do the act.
48. Fees. — (1) There shall be paid in respect of the several proceedings
specified in the fourth schedule the fees in that schedule prescribed.
(2) The Governor-General-in-Council may, if he thinks fit, reduce any
of those fees and revoke or vary the reduction.
(3) The fees puyable under this Section shall be collected by means
of slumps or otherwise as the Governor-General-in-Council directs.
(4) A proceeding in respect of which a fee is payable under the fourth
schedule shall be of no effect unless the fee lias been paid.
49. RiMet and forms. — (1) The Governor General-in -Council may make
such rules and present:* such forms as he thinks necessary for carrying out
the purposes of this Part, and may alter or amend either of the forms in the
second and third schedules.
(2) Rules under this Section may provide, among other matters, for the
printing of specifications, memoranda and amended specifications, and for the
distribution or sale of printed copies thereof.
PART II.
DESIQNS.
(X.H . — Sections 50-63 which comprised Part II of this Act, since they
related only to Designs are not printed in the present work.)
1002
THE LAW OF PATENTS IN INDIA
THE FIRST SCHEDULE,
Enactments Repealed.
(See Section 2.)
Number and Year.
Subject or Title.
Extent of Repeal.
XV of 1859 . .
For granting exclusive privilege to
Inventors.
So much as has not
been repealed.
XIII of 1872 . .
Patterns and Designs Protection Act, 1872
So much as has not
been repealed.
XVI of 1883 . .
Protection of Inventions Act, 1883
The whole.
I of 1879 ..
Indian Stamp Act, 1879
Article 48, Sche-
dule I.
THE SECOND SCHEDULE.
Applioation where Patent has not been obtained.
(See Sections 5 and 49.)
To The Governor-General-in-Council.
The application of (here insert name, occupation and address), for leave
to file a specification under Part I of the Inventions and Designs Act, 1888.
1. The applicant is in possession of an invention for (state the title of
the invention) ; he is the inventor thereof (or, as the case may be, the executor,
administrator or assign of the inventor), and, to the best of his information
and belief, the invention is new within the meaning of Part I of the Inventions
and Designs Act, 1888, and no circumstance exists which, if the applicant is
authorized to file a specification and files it in accordance with that Part, will
disentitle him to ail exclusive privilege thereunder in respect of the invention.
2. The following is a description of the invention (here describe it and
tho particular novelty whereof it consists).
3. The applicant, therefore, applies for leave to file a specification of
the invention pursuant to Part I of the Inventions and Designs Act, 1888.
(Signature and verification.)
THE THIRD SCHEDULE.
V Application where Patent has been obtained.
(See Sections 5 and 49.)
To The Governor General-iii-Oouncil.
The application of (here insert name, occupation and address), for leave
to file a specification under Part I of the Inventions and Designs Act, 1888.
1. The applicant (or, ns the case may he, A. 11. of whom the applicant
is the executor, administrator or assign) has obtained a patent in the United
Kingdom dated and sealed as of the day of , and actually
sealed on the day of , for (state tho title of the
invention) .
2. To the best of the information and belief of the applicant the
invention is new within the meaning of Part I of the Inventions and Designs
Act, 1888, and no circumstances exist which, if the applicant is authorized to
file a specification and files it in accordance with that Part, will disentitle him
to an exclusive privilege thereunder in respect of the inventions.
3. The following is a description of the invention (here describe it and
the particular novelty whereof it consists).
4. The applicant therefore applies for leave to file a specification of the
invention pursuant to Part I of the Invention and Designs Act, 1888.
(Signature and verification.)
1003
AtPfiNDlX IV
THE FOURTH SCHEDULE.
FMt (Invention!).
(See Sections 8, 15 and 48.)
Rs. A. P.
(1) In respect of an application for leave to file a specification
(Section 5) . . . . . . 10 0 0
(2) In respect of the filing of a specification (Section 8) . . 30 0 0
(3) In respect of an extension of the time for filing a specifica-
tion (Section 8) .. .. .. .. 2000
(4) In respect of the continuance of an exclusive privilege
(Section 8) —
(a) After the filing of the specification and before
the expiration of the fourth year from the
date of the filing thereof . . 50 0 0
(b) After the expiration of the fourth year and
before the expiration of the fifth year from
that date . . 50 0 0
(c) After the expiration of the fifth year and
before the expiration of the sixth year from
that date . . . . . . 50 0 0
(d) After the expiration of the sixtli year and
before the expiration of the seventh year from
that date . . 50 0 0
(e) After the expiration of the seventh year and
before the expiration of the eighth year from
that date . . . . . . . . 50 0 0
(f) After the expiration of the eighth year and
before the expiration of the nintli year from
that date . . . . 100 0 0
(g) After the expiration of the ninth year and
before the expiration of the tenth year from
that date . . . . . . 100 0 0
(h) After the expiration of the tenth year and
before the expiration of the eleventh year
from that date . . ■ . . 100 0 0
(i) After the expiration of the eleventh year and
before the expiration of the twelfth year from
that date .. .. 100 0 0
(j) After the expiration of the twelfth year and
before the expiration of the thirteenth year
from that date .. .. .. 100 0 0
1604
THE LAW OF PATENT'S IN INMA
Provided that the inventor may pay the sum total of the said Rs. A. P.
fees in respect of the continuance of the exclusive privilege,
or any part thereof short of the sum total, at any time
before the same falls due.
(5) In respect of an enlargement of the time for payment of
a fee under article (4) of this schedule (Section 8)—
(i) If the enlargement does not exceed one month . . 10 0 0
• (ii) If the enlargement exceeds one month but does
not exceed two months . . . . 25 0 0
(iii) If the enlargement exceeds two months .. 50 0 0
(6) In respect of an application for an extension of an exclu-
sive privilege for a further term (Section 15) .. 50 0 0
(7) In respect of the continuance of an exclusive privilege of
which the term has been extended (Section 15) . . 100 0 0
To be paid before
the expiration of
each year of the
extended term :
Provided that the inventor may pay the sum total of the said
fees in respect of the continuance of the exclusive privilege,
or any part ttareof short of the sum total at any time be-
fore the same falls due.
(9) In respect of an application for leave to file a memoran-
dum or amended specification (Section 18) .. 20 0 0
(10) In respect of a petition to the (»overnor-General-in
Council for a compulsory licence (Section 43) . . 50 0 0
(11) For the inspection of any book or other document
which is open to inspection under Part I . . . . 10 0
(12) For conies—
(a) When the number of words copied does not
exoeed four hundred . . . . . . 10 0
(b) For evey hundred words in excess of four hundred 0 4 0
(c) Of drawings or photographs .. .. -Cost according to
agreement.
(13) For certifying copies—
For every hundred words .. . . .. 020
THE FIFTH SCHEDULE.
Application for Orders for Registration *f Design.
(See Sections 51 and 63.)
[iV./f.— 1 This Schedule and the Sixth Schedule which related only to
Designs are not printed in the present work.]
THE 81XTH 8CHEOULE.
Fees (Designs).
(See Section 62.)
[AMf.— Not printed.]
AM’JsNpfx IV ioto
INDIAN PATENTS ANO DESIGNS RULES, 1S12.
N.B.— These Rules as here printed embody the amendments contained in the
" Gazette of India " dated 16th October 1915 in Part 1 at page 1914 , also those
contained in the “ Gazette of India ” dated 24th January 1921 in Part I at page 170,
and those contained in the “ Gazette of India ” dated 21st June 1923 in Part l at
page 373, and those of a Notification No. 0-197 dated 17th July 1930 , and those of
a Notification of the Department of Industries and Labour published in the “ Gazette
of India ” dated 3th November 1932 , Part /, at page 1208, These Indian Patents
and Designs Rules of 1912 were originally published in the “ Gazette of India ”
dated 23rd September 1911 in Part U at page 1441. They have been superseded
in to to under Section 68 of the Indian Patents and Designs Rules , 1933 ( for which
sec Appendix V below).
In exercise of the powers conferred by sections 57 and 77 (1) of the. Indian
Patents and Designs Act, 1911 (II of 1911), the Oovernor-Oeiieral-in Council is
pleased to make the following rules: -
chapter 1 .
PRELIMINARY.
1. Short title and commencement. — -These rules may he called (lie Indian
Patents and Designs Rules, 1912.
They shall come into force on the first day of January, 1912.
2. Definitions. — 111 the rules, unless there is anything repugnant in the
subject or context —
(«) The Act means the Indian Patents and Designs Act, 1911.
(b) Office means the Patent Office provided under section 55 of the
Act.
(c) Controller means the Controller of Patents and Designs
appointed under section 56 of the Act, and includes any officer
appointed to act for him.
(d) “ British application " means an application by any person for
protection of his invention in any part of His Majesty's
dominions for the protection of which invention in British
India the provisions of section 78A of the Act are for the time
being applicable.
(e) “ Reciprocity application ** means an application in British India
under section 78A of the Act.
3. Communications to the Office. — Any application, notice or other docu-
ment, ami any fee, authorized or required to be left, made, given or paid at
the Office, or to the Controller, may be sent by hand or through the post
addressed to the Controller of Patents and Designs, 1, Council House Street,
Calcutta, and, if so sent, shall be deemed to have been left, made, given or paid
on the day of receipt.
4. Fees. — (1) The lees to be paid under the Act shall be those specified
in the first Schedule to these rules, hereinafter described as the prescribed fees.
(2) Fees may be paid in cash at the office, or may be sent by money
older or postal older or cheque payable to the Controller at Calcutta. Cheques
not carrying the. correct addition for commission, and other cheques on which
the full vulue cannot be collected in cash within the time allowed lor payment
of the fee, will only be accepted at the discretion of the Controller. iStarnps will
not be received in payment of fees.
5. Application, etc., to be accompanied by the prescribed fee. —All
applications, notices, icquests, appeals or documents on which a fee is leviable
under these rules shall be accompanied by the prescribed fee.
6. The forms set forth in the second Schedule to these rules, with such
variations as the circumstances of each case require, shall he used for the
respective purposes therein mentioned, and if used shall he sufficient.
7. sue, eta., Of documents.— (1) All documents and copies of documents,
except drawings, sent to or left at the Office or otherwise furnished to the Con-
troller shall be written, typewritten, lithographed, or printed in the English
ioo6 The law ok patents in iKdIa
language (unless otherwise directed) in large and legible characters with deep
permanent ink upon strong white paper, and on one side only, of a size approxi-
mately of 13 inches by 8 inches, leaving a margin of at least one inch and a half
on the left-hand part thereof. Signatures thereto must be written in a large
and legible hand, and a vernacular signature must be accompanied by a
transliteration in English.
(2) Duplicate documents shall he filed at the Office, if at any time
required by the Controller.
(3) Names and addresses of applicants and other persons shall be
given in full, together with such other particulars of nationality, caste or calling
as are necessary for identification.
8. Signature and verification of doeuments specified in aeotion 75 of the
Aet. — The documents specified in section 75 of the Act shall be dated and signed
at the foot, and shall contain a statement that the facts and matters stated
therein are true to the best of the knowledge, information and belief of the
person signing them.
9. Agenoy. — (1) For all matters falling under the provisions of section 76
of the Act, ‘ any person may, unless otherwise directed by the Controller,
authorize, under his personal signature, any other person to act as his agent
and to receive all notices, requisitions and communications. The authority may
be given on Form 26.
(2) If lie does not desire to authorize any other person to act as
his agent, but wishes notices, requisitions and comm unicat ions to be sent to
a particular address, lie may notify the same to the Controller on Form 27.
CHAPTER II.— PATENTS.
APPLICATIONS FOR GRANT OF PATENT.
10. Application. — (1) An application, under section 3 of the Act, for a
patent shall be made on Form 1 or Form 2, and shall be accompanied by a
specification, prepared in duplicate in accordance with Form 3.
(2) Applications shall, as far as may be practicable, be numbered and
dated in the order of their receipt.
(3) If the true and first inventor, or any other applicant is in the
service of the Crown, lie shall disclose, that fact in the application and shall
state the office lie holds.
(4) If the true and first inventor does not wish to be a party to the
application, the applicant shall produce the original deed of assignment or other
document under which he is enabled to apply for a. patent, unless the application
itself is endorsed by the true and first inventor in the presence of two witnesses
with a statement that the said inventor agrees that the application shall be made
without his name as an applicant lor a patent.
(5) If the application is made by the legal representative of a deceased
inventor, the legal representative shall produce for inspection the probate of the
will or the letters of administration of the estate of the inventor, or a certified
copy of such probate or letters, or such other evidence of his title as the
Controller may require.
10A. Every reciprocity application shall be made on Form 2A or on
Form 2R and shall contain a declaration that a British application has been
made for protection of the invention to which such reciprocity application relates
and shall specify every part of His Majesty’s dominions in which any such
British application has been made and the official date or dates thereof. The
reciprocity application shall be accompanied by a specification prepared in
duplicate in accordance with Form 3.
SPECIFICATION.
11. Spesifioation.— (1) The specification shall commence with the title of
the invention and the name of the applicant as in the application. It shall
terminate with a clear and succinct statement of the invention claimed, distinct
from the body of the specification, and shall be signed by the applicant or his
agent.
APPENDIX IV
1007
(2) Where the invention is capable of representation by drawings, such
drawings shall be prepared in accordance with rule 13 and shall be supplied
with, and referred to in detail in, the specification.
(3) Irrelevant oi 4 other matter, not necessary, in the opinion of the
Controller, for elucidation of the invention, shall be excluded from the title,
description, claims and drawings.
11A. (1) In addition to the specification left with every reciprocity applica-
tion, a copy or copies of the specification or specifications, and drawings or
documents filed or deposited by the applicant in respect of the first British
application, duly certified by the official chief or head of the Patent Office in
which they were filed or deposited, or otherwise verified to the satisfaction of
the Controller, shall be left at the office at the same time as the reciprocity
application or within such further time, not exceeding three months, as the
Controller may allow.
(2) If any specification or other document- relating to the application
is in a foreign language a translation thereof shall be annexed thereto and shall
be verified to the satisfaction of the Controller.
(3) An application for an extension of time for leaving the copy or
copies of the specification or specifications, drawings or documents, filed or
deposited in respect of the first application, shall he made on Form 4A.
12. Amendments how to be made.— (1) When the specification, or any
drawing accompanying it is defective and requires amendment, one copy shall
he returned to the applicant or his agent and all alterations shall he made thereon
as far as possible. Additional matter may he interpolated if necessary by re-
writing such pages as are required to form a continuous document. Amendments
shall not he made by slips pasted on, or as footnotes, or hy writing in the
margin. The untended documents shall be returned to the Controller together
with the cancelled pages or drawings, if any, and with a duplicate of any pages
or drawings that have been amended or added.
(2) Amendments, alterations or additions shall he initialled by the
applicant or his agent.
(3) No amendments, alterations or additions shall he made in a document
returned for amendment beyond those necessary to comply with the requirements
of the Controller.
(4) When a specification comprises more than one invention, and it is
considered by the Controller or the applicant- that the application should he
restricted to one invention, the additional inventions may he made the subject-
matter of additional applications. Any such applications, if made before the
acceptance of the original application, shall, on the renuost- of the applicant-,
hear date of the original application, and shall he proceeded with as substantive
applications of that date.
DRAWINGS WITH APPLICATIONS FOR PATENTS.
13. SiZQ Of drawings, etc. — (1) Drawings shall he supplied in duplicate on
sheets 13 inches in height and either 8 or 16 inches in width. A clear margin
of half an inch shall he left round each sheet. The figures of the drawing shall
he numbered consecutively Figure 1, Figure 2, etc., and shall he placed upright
on the sheets. Reference figures and letters shall la' clear am) hold, not less than
£th of an inch in height, and the same letters shall he used for the same parts in
different views or drawings. The sheets of drawings, when more than one, shull
be numbered consecutively, the number of each sheet being shown ip the right-
hand top corner. Each sheet shall he signed hy the applicant, or his agent- in
the bottom right-hand corner.
(2) No written description of the invention shall appear on the sheets
of drawings.
(3) At least one copy of the drawings shall be suitable for reproduction
and, for that purpose, shall he prepared oil tracing cloth or on smooth white
paper which is not opaque. All lines and lettering shall he executed with
Indian ink of good quality. Coloured lines and washes shall not be used. The
lines and lettering shall be firm and even, and section lines shall not he closely
drawn. The scale adopted shall lie large enough to show the invention clearly.
(4) Drawings shall he delivered flat or rolled so iih to he
free from crefwes,
THE LAW OF PATENTS IN INDIA
1008
OPPOSITION TO CHANT OR AMENDMENT, ETC.
14. Notice Of opposition. — Notice of opposition to the grant, or to the
amendment, etc., of a patent shall be given in duplicate on Form 5. The
duplicate notice shall be sent by the Controller to the applicant or his agent.
15. Piling of statements.- (1) Within 14 -days of giving notice ot opposi-
tion the opponent may, and shall, if at auy time so required by the Controller,
leave at the Office a full written statement in duplicate of the leasons for, and
extent of, his opposition, and of the grounds upon which he relies in support
of his opposition.
(2) If the written statement referred to in clause (1) is supplied the
Controller shall furnish the applicant or his agent with the duplicate copy
thereof, and the applicant or his agent may leave at the Office a reply in writing
within a time to be specified by the Controller. Such reply shall deal in full
with the statement of the opponent and shall be in duplicate.
(3) If the reply referred to in clause (2) is supplied by the applicant,
the Controller shall furnish the opponent or his agent with the duplicate copy
thereof, and the opponent or his agent may again leave at the Office a rejoinder
in writing within a time to lie specified by the Controller. Such rejoinder shall
be confined strictly to matters in reply, and shall be in duplicate. The duplicate
copy shall be sent by the Controller to the applicant or his agent.
(4) The Controller may require at any time that any written statement,
reply or rejoinder shall be in the form of an affidavit.
(5) The time ordinarily allowed for filing a reply or rejoinder shall be
one month.
16. Hearing. — (1) On completion of these proceedings, if any, or at such
other time ns he may see fit, the Controller shall appoint a time for the
hearing of the case, and shall give the parties not less than ten days’ notice
of such appointment. If either party does not desire to be heard he shall as
soon us possible notify the Controller to that effect. If either party desires to
be heard, he must leave a notice of his intention to attend the hearing on
Form 6, together witli a fee of Rs. 10, at the Office. The Controller may refuse
to hear any party who has not left such notice and fee at least two clear days
before the date fixed for the hearing.
(2) After hearing the party or parties desirous of being heard or if
neither party desires to be heard, then without a hearing, the Controller shall
decide the case and notify his decision to the parties.
SEALING OF PATENTS.
17. Sealing. — (1) If an applicant desires to have a patent sealed on his
application, he shall, within the period allowed by section 10, sub section 2 of
the Act, leave at the Office an application on Form 7.
(2) Where the applicant neglects or fails to pay the fee prescribed
within the time allowed, the time may he extended for a period not. exceeding
three months. Aii application for such extension of time shall he rnude on
Form 4, and shall be accompanied by a fee of Rs. 10, Rs. 20, or Rs. 30 for an
extension of one, two, or three months respectively.
18. Form Of patont. — The patent shall he in the form given in the third
Schedule to these rules, with such modifications as the circumstances of each
case require.
RESTORATION OP A LAPSED PATENT.
19. Restoration Of lapsed patent. — (1) Application under section 16 of the
Act for the restoration of a lapsed patent shall be made on Form 9.
(2) If the Controller entertains the application, lie shall advertise it in the
“ Gazette of India. **
20. Oppoeition. — Notice of opposition to the restoration may he given on
Form 5 within six weeks of the advertisement and the procedure for the disposal
of such opposition shall he regulated by the provisions of Rules 14, 15 and 16.
AMENDMENT.
21. Amendmant. — A request, under section 17 of the Act for the amend-
ment of an application, specification or drawings (not being a request under
section 62 of the Act for correction of g clerical error) shall be made on Form }0
APPENDIX IV
1009
and shall be accompanied by a copy of the application, specification, or drawings
showing in red ink the proposed amendment in such a manner as to indicate
clearly the alteration desired.
22. Prooedure when patent hat been accepted.— If the request relates to
an application for a patent which has been accepted, the request and the nature
of the proposed amendment shall be advertised by notification in the 11 Gazette of
India ” and in such other manner, if any, as the Controller may in each case
direct under Rule 45. The Controller shall also notify all persons whose names
are entered at the time of the request on the Register as claiming an interest
in the patent.
23. Oppocltion. — Notice of opposition to the amendment may he given on
Form 5 within three months of the date of the notification, and the procedure
for the disposal of such opposition shall be regulated by the provisions of
Rules 14, 15 and 16.
SURRENDER OF PATENTS.
24. Surrender Of patent. — Notice of all offer under section 24 of the Act
to surrender a patent shall be made on Form 11. The Controller shall advertise
the offer in the “ Gazette of India," and shall notify all persons whose names are
entered at the time of the offer on the Register as claiming an interest in the
patent.
25. Oppocltion. Within six weeks of the advertisement any person may
give notice of opposition to such surrender. After the expiration of such six
weeks the Controller may, if a notice of opposition has been given, appoint a
hearing if he sees fit, and shall decide whether the patent shall he revoked.
CHAPTER III.— DESIGNS.
(N.B. — The following Rules 26-3X comprising Chapter ///, which related
exclusively to Designs , have been here omitted.)
CHAPTER IV.— GENERAL.
REGISTERS OF PATENTS AND DESIGNS.
33A. The patent granted on any reciprocity application shall he entered
in the register of patents as dated of the official date of the first British
application, but the date of the reciprocity application shall also be entered ill the
register.
39. Requests under section 63 of the Act. — Requests under section 63 of
the Act to enter a claim to any interest in a patent or registered design shall be
made on Form 21. accompanied by the. document under which the claim is made,
and an attested copy thereof. If. however, the document is a matter of record,
an official or certified copy thereof may he produced unless the Controller otherwise
directs.
40. Rectification of the Register. — Ten dear days’ notice of every applica
tion to the Comt under section 64 of the Act for rectification of the register
shall be given to the Controller.
APPEAL8.
41. Appeals.— (1) An appeal to the Governor Geuerul-iii-Council from the
decision of the Controller shall be made on Form 24 and shall he left at the
Office in duplicate and shall show fully the reasons for appealing and the grounds
on which objection is taken to the decision.
(2) The Controller shall forward one copy to the Govcrnor-General'in-
Council through the Secretary in the Department of Commerce and Industry, who
shall notify the appellant of its receipt.
CONVERSION OF EXCLUSIVE PRIVILEGE INTO A PATENT.
42. Conversion of exolualvo privilege into a patent.—
(N.B.—This Rule ceased to be effective after 31st December 1913).
.127
lOld TUB LAW OF PATENTS IN INDIA
MISCELLANEOUS POWERS OF THE CONTROLLER.
43. Exercise of discretionary power of Controller.— Before exercising any
discretionary power given to the Controller by the Act or these rules adversely
to the. applicant for a patent, or for amendment of an application or specification,
the Controller shall (under section 67 of the Act) give notice to the applicant
or his agent and shall, if so required within 1 month of the date of such
notice, appoint a date for a hearing in the matter and shall give ten days’
notice thereof.
44. Controller may require statement.— -Whether an applicant or agent
desires to be heard or not, the Controller may at any time require him to submit
a statement in writing within a time to be notified by the Controller, or to
attend before him and make explanation with respect to such matters as the
Controller may require.
45. Controller may direct advertisement in newspapers.— Applications for
extension of the term of :i patent under section 15. or for amendment under
section 17, shall, if so directed by the Controller, be advertised by the applicant
in not less than two newspapers published in British India. Copies of the news-
papers containing those advertisements shall be supplied to the Controller.
Advertisement of such applications shall be made by the Controller by
iioli ficfVtion in the “ (Jaaette of India.’ *
46. General powers of amendment.— Any document for the amending of
which no special provision is made by llie Act may be amended, and any
irregularity in procedure which, in the opinion of the Controller, may be
obviated without detriment to the interests of any person, may be corrected if
the Controller thinks fit, and upon such terms as he may direct.
47. General power to enlarge time,— The time prescribed by these rules
for doing any act or taking any proceeding thereunder may be enlarged by the
Controller, if he thinks fit, and upon such terms as he may direct.
SCHEDULES.
I. Fees, section 57 ami Buie 4.
II. Forms, Buie 6.
III. Model form of patent, section 12 (2) and Buie 18.
TV. Classification of goods for designs, sections 43 (3) and 77 (1) (b) and
Buie 26.
THE FIRST SCHEDULE.
(Vide saetion 57 and rule a.)
FEES.
Number
of entry.
On what payable.
Number
of Form.
Proper Fee.
1
Re. A. P.
1
On application for a patent under section 3
1 or 2
10 0 0
1-A
On application for a patent under section
78- A
2- A or 2-B
10 0 0
2
For extension of time to accept application
under section 5 ( 4 ).
4
20 0 0
3
O 11 notice of opposition under section 9(f)
5
5 0 0
4
On hearing by Controller under section
9 ( 2 ). By applicant and opponent
respect ively
6
10 0 0
APPENDIX IV
1011
Number
of entry.
On what payable.
Number
of Form.
Proper Fee.
5
Before sealing under sect ion 10 ( / )
7
ns. a. p.
30 0 0
6
On extension of lime for sealing under
section 10 U) (d). . .
One month
4
10 0 0
Two months . .
. .
20 0 0
Three months . .
30 0 0
6-A
On extension of time for filing documents
under rule 11- A.
One month
4 A
• e
10 0 0
Two months
. .
20 0 0
Three months . .
30 0 0
7
On certificate of renewal under section 14
Hefore expiration of 4th year in re
sped of the 5th year
8
60 0 0
Before expiration of 5th year in respect
of the 5th year
»
50 0 0
Before expiration of 6th year in respect
of the 7th year
..
50 0 U
Before expiration of 7th year in respect
of the 8th year
50 0 0
Before expiration of Ht h year in
respect of the 9th year
, .
50 0 0
Before expiration of 9th year in
respect of the 10th year
, ,
100 0 0
Before expiration of 10th year in
respect of the 11th year
, ,
100 0 0
Before expiration of lltli year in
respect of the 12th year
, ,
100 0 0
Before expiration of 12th year in
respect of the 13tli year
. •
100 0 0
Before expiration of 13th year in
respect of the 14th year
. .
100 0 0
Before expiration of 14th year in
respect of the 15th year
. .
150 0 0
Before expiration of 15th year in
respect of the 16t h year
. ,
150 0 0
1012
THE LAW OP PATENTS IN INDIA
Number
of entry.
On what payable.
Number
of Form.
Proper Fee.
8
Note.
The fee for tivo or more years may be
paid in advance.
On enlargement of time for payment of
renewal fees under section 14 (2)
One mont li
4
Rs. A. P.
10 0 0
Two months . .
. .
20 0 0
Three months . .
. .
30 0 0
9
On petition for extension of term of patent
under section 15
..
50 0 0
10
On certificate of renewal in respect of each
year under section 15
150 0 0
11
On application For restoration of lapsed
patent under section 16
9
100 0 0
12
On opposition to restoration under sec-
tion 16
5
5 0 0
V '
On hearing by Controller under section 16.
By applicant and opponent, respectively
6
10 0 0
14
On application to amend under section 17
Before acceptance
10
10 0 0
After ,,
. .
20 0 0
IS
On opposition to amendment under sec-
tion 17 (.?)
5
5 0 0
16
On hearing by Controller under section 17
(4). By applicant and opponent, re-
spectively
6
10 0 0
17
On petition for compulsory licence or re-
vocation under sections 22 and 23
10 0 0
18
On offer to surrender n patent under sec-
tion 24
11
10 0 0
19
For duplicate of a patent under section 39
12
10 0 0
20
On notice to Controller of intended ex-
hibition of an invention or design under
section 40 or 52
13
5 0 0
APPENDIX IV
1013
Number
of entry.
On what payable.
Number
of Form.
Proper Fee.
21
On request io register design under sec-
tion 43
In classes 1 to 6 and class 16
14
Rs. A. P.
3 0 0
In classes 7 to 15
. .
0 8 0
22
On request for written decision under
Hide 32
15
5 0 0
23
On request to extend copyright under sec-
tion 47
16
10 0 0
24
On request to inspect under section 50 . .
17
1 0 0
25
On request for information under section
51
When number is given
18
2 0 0
When number is not given
. .
4 0 0
26
On inspection of the register under sec-
tion 59 '
1 0 0
27
On request for certificate under section 59
19
2 0 0
28
An additional fee of 4 annas for every 100
words in excess of 400 words will be
charged. Drawings will he charged
according to agreement
On request to correct or cancel entry in
register under section 62
20
3 0 0
29
On request to enter claim in register
under section 63
21
5 0 0
30
On request to alter address in register . .
22
1 0 0
31
On entry of order of court under section
64 U)
23
3 0 0
32
On appeal from the Controller to the Gov-
ernor-General-in-Council under section
70 ..
24
£
O
o
33
On application for a patent in place of an
exclusive privilege under section 81
25
3 0 0
34
On opposition to grant thereof under sec-
tion 81
5
5 0 0
35
On hearing by Controller under section 81
(j). By applicant and opponent re-
spectively
6
10 0 0
1014
THE LAW OF PATENTS IN INDIA
THE SECOND SCHEDULE.
FOAMS.
List of Forms.
Form No.
Act,
section.
Title.
Fee.
Rs. A. P.
1
3
Application for patent
10 0 0
2
3
»» M «• ■ • • •
10 0 0
2- A
78- A
. • •
10 0 0
2 B
78- A
»• •• ft
10 0 0
3
4
Specification
••
4
5U),10U),
14 (*)
Application for extenfdon of time
Rb. 10, 20, 30
4 A
78- A
»» ,) M •• • •
Rs. 10, 20, 30
5
9 (i), 16,
17, 18
Notice of opponition
5 0 0
6
9 (<?), 16,
17, 18
Notice of intention to attend hearing
10 0 0
7
10
Bequest for sealing
30 0 0
8
14
Bequest for certificate of renewal
Rs. 50 or 100
9
16
Application for restoration of patent
100 0 0
10
17
Application to amend
Rs. 10 or 20
11
24
Offer to surrender patent
10 0 0
12
39
Application for duplicate patent
10 0 0
13
40 and 52
Notice of intended exhibition
5 0 0
□•signs.
14
43
Application for registration ..
0 8 0
15
• •
Bequest for grounds of decision
5 0 0
16
47
Application for extension of copyright . .
10 0 0
17
50
Request to inspect design
10 0
18
51
,, for information
i
Rs. 2 or 4
APPENDIX IV
1015
Act,
section.
Title.
Fee.
19
59
General.
Request for certificate
Rs. A. P.
2 0 0
20
62
,, to cancel or correct ..
3 0 0
21
63
,, for entry in register
5 0 0
22
63
,, for entry of address
1 0 0
23
64
Entry of order of court
3 0 0
24
5W.9 0),
Appeal
30 0 0
26
27
16 ( 5 )* n
(6), 43(4),
70
76
76
Power of authority to agent ..
Statement of address
••
[ N.B» Here followed certain specimen forms , which are here omitted.]
THE THIRD SCHEDULE.
Model Form of Patent.
[N.B. Since the Indian Model Form of Patent in the current Indian Patent
and Designs Rules, 1933 ts set out in full below in Appendix V, the contents of this
third schedule to the old Rules of 19 ij is here omitted.]
THE FOURTH 8CHEDULE.
Classification of Goods.
fV.B. Since the contents of this schedule refers to matters which related
exclusively to Designs, they are here omitted ]
APPENDIX NO. V.
CURRENT INDIAN ACTS AND RULES.
C0NTENT8.
N.B. — The Acts which follow are in full force and effect in British India at
the present day. In addition to the complete text of the Acts as passed , copies of the
respective Objects and Reasons and, when desirable, of the Report of the Select
Committee in regard to the Bills which culminated in these Acts , are set out below
for convenience cf reference. The principal Act of ign is also set out in full in its
current form after giving effect to the various amendments which havobeen effected
by the amending Acts. References arc given in respect of the Sections of the current
principal Act as amended and to the current Rules showing the pages in the present
tvork, where any specific Section or Rule is considered.
CURRENT ACTS.
(Willi the relative; Statement of Objects and Reasons and, where the Bill
has been sent to a Select Committee before being passed into Law, witli the
Report of the Select Committee) :
1. Objects and Reasons of the Bill which culminated in Act II of 1911.
2. Act II of 1911 as originally passed.
3. Objects and Reasons of the Bill which culminated in Act XXIX
of 1920.
4. Act XXIX of 1920.
5. Objects and Reasons of the Bill which culminated in Act VII
of 1930.
6. Report of the Select Committee on the Bill which culminated in
Act VII of 1930.
7. Act VII of 1930.
8. Extracts from the Indian and Bengal Stain]) Acts.
9. Calcutta High Court (Jurisdiction Limits) Act (Indian Act XV
of 1919).
10. Madras High Court (Jurisdictional Limits) Act (Madras Act IV
of 1927).
11. Text of the current Indian Patents and Designs Act embodying
the amendments and provisions made by the above mentioned
Acts : with references to the pages in this work where particular
Sections of the Act are referred to, considered, and commented
on.
CURRENT RULES.
12. Indian Patents and Designs Rules, 1933. These Rules were
published in Part II of the “ Gazette of India ” of lltli February,
1933. They came into effect on 1st April, 1933. (References
are given to the pages in this work which refer to particular
Rules ami where particular Rules are considered and commented
on).
APPENDIX V
1019
OBJECTS AND REA80NS OF THE BILL CULMINATING
IN ACT II OF 1911.
Extract from “ Gazette of India 99 of 26th March, 1910, Part V, at page 92,
Statement of Objects and Reasons of the Indian Patents and Designs Bill
(No. 9 of 1910).
The Inventions and Designs Act, V of 1888, now in force is based in all
material respects as regards inventions on the previous Act, XV of 1859, which,
in turn, was practically a repetition of Act VI of 1856. This, the earliest Act
in India, was founded on the English Patent Law of 1852 contained in the
Statutes 16 and 17 Viet., c. 115.
2. Under the Statute of 1852 a patent was granted subject to the
subsequent filing of a specification but under the Indian Act of 1859 an advance
in procedure was made in that the exclusive privilege which is the Indian
equivalent to a patent, only accrued when a specification was filed. By the
later Statute of 1880 (46 and 47 Viet., c. 57) the patent was not grunted until
after the acceptance of a correct specification and the absence or failure of
opposition by interested parties; and this procedure is still followed in ^ the
English Law which is contained in the Patents and Designs Act, 1907 (7 Kdw.
7, c. 29).
3. Although the Indian Act of 1888 was passed five years after the
United Kingdom Statute of 1883, it was felt that the time was not yet ripe
in this country for introducing the English practice in its entirety as the volume
of patent work was then small. Now, however, that it is growing and is likely
to do so at a much greater rate in the future, it is thought advisable to bring
the practice in this country more into conformity with that of the United
Kingdom, thereby following the example of most of the other British posses-
sions. By postponing action until now it has been possible to take advantage
of the consolidation of the English Statutes which the Patents and Designs Act,
1907, has effected. The present appears therefore to be a very opportune tune
for undertaking legislation in India.
4. The existing procedure in India under the Inventions uml Designs Act,
1883. for obtaining an exclusive privilege is somewhat as follows. The inventor
submits to the Governor-General -in-Council an application accompanied by the
prescribed fee and containing a description of the invention. The title of the
invention is notified in the “Gazette of India, ’ and after examination by the
Secretary under the Act for formal matters, the application is exposed to public
inspection in the Secretary’s office fur ten days, so that any number of the
public may have an opportunity of objecting to the grant of leave to file the
specification. The application is then further examined by the Secretary more
closely to see whether it complies in all respects with the Act, and also, where
possible, to see whether the invention is novel. Any objections are also
considered by him at this stage. If lie finds the application is in order, leave
to file a specification is granted, subject generally to conditions in the case of
inventors who are Government servants. Within a period of six months (which
may on permission he extended to nine mouths) the applicant., if he desires
to obtain an exclusive privilege, must file six copies of a specification together
with a second fee. The specification is then examined by the Secretary to see
whether it is substantially identical with the description drawings and claims
in the application. As soon as this identity is secured, the specification is
notified as filed as from the date oil which it was first received and the
exclusive privilege accrues from that for fourteen years, or even with permission
for a longer period, but it ceases if any corresponding English or foreign
patent lapses.
5. Under the above procedure the public have no proper opportunity of
objecting to the grant as merely a single manuscript copy of the application,
which often contains an imperfect description, is available for inspection in
Calcutta only during a very limited period. Subsequently, though the exclusive
privilege may on application to the High Court be revoked on various grounds,
including invalidity and non-novelty, these grounds — which are the natural
grounds of defence — cannot, except in certain special cases, be pleaded by
privilege. For the sake both of the inventor and the public it is desirable
that the procedure should be simplified and made more direct and effective,
1000 THE LAW OF PATENTS IN INDIA
not only in regard to the grant of patents but also in respect of their
subsequent existence and operation. Further it seems expedient that the
dependence of Indian rights on foreign patents should cease.
6. By the Bill as proposed the method of obtaining a patent for an
invention will consist of the following stages : —
(а) submission of application and specification at the same time,
together with the prescribed fee;
(б) acceptance of the application after complete examination within
nine or twelve months;
(c) publication of documents after such acceptance;
(</) interval of three months for submission of objections to grant;
(fl) grant of patent after objections (if any) have been disposed of,
on payment of the prescribed fee.
The public will thus be protected by increasing the facilities for opposition
at an effective period, while the applicant will be enabled to restrict his claim
to what appears to be more properly his invention, thus obviating to some
degree his risks in subsequent infringement or revocation proceedings. The
applicant will further be protected as his application will be kept secret, which
it is not at present, until acceptance.
7. The following further improvements in the law proposed by the Bill
may here be enumerated: —
(а) Patents will not lapse on cessation of foreign patents.
(б) Patents will be granted as being more suitable for commercial
1 purposes than the present certificates that specifications have
been filed and fees paid.
(r) Proprietorship of patents and designs will he more fully recorded.
(</) Amendment of application and specifications will be facilitated
and opposition thereto by the public will be permissible as in
the case of the original applications.
(e) Defendants in infringement suits will be allowed in all cases to
use; the natural ground of defence by pleading non-validity and
non-novelty of the patent.
(/’) Validity of patents will be certified in certain cases to give
protection against wilful infringers.
(y) Threats of legal proceedings will be actionable unless the patentee
proceeds diligently with an infringement suit.
(A) Anomalies in respect of British inventors will be removed and
arrangements will be made for the mutual protection of
inventions and designs between India and other British
possessions and between Indian and Foreign States.
(i) Compulsory licences for the working of inventions will be
obtainable oil more clearly defined and broadened grounds than
formerly.
(j) Surrender of patents and restoration of ceased patents will be
permissible.
(/•) The law' as to designs, which uow follows the Statute of 1883,
will be brought into line with the Statute of 1907.
(/) Filially a Controller of Patents and Designs will be established,
with power to dispose of many matters which are at present
referred to the Goveriior-Geiieral-in-Council.
8. Generally speaking, the provisions of the Bill follow with the necessary
modifications those of the Inventions and Designs Act, 1907, only such provisions
of the Act of 1888 beiug retained as appear necessary to meet the special
conditions in India. It is hoped that the proposals contained in the Bill will
enable the attainment of the double object of encouraging the inventor and
of giving more effective protection both to him and to the public.
9. The more important alterations in the existing law proposed by the
Bill are explained in the Notes on Clauses below, and two Tables, showing the
extent to which the provisions of the Act of 1888 and the Statute of 1907
have been adopted in the Bill, are appended.
21st March, 1910.
B. ROBERTSON.
APPENDIX V
1021
ACT II OF 1911 AS ORIGINALLY PA8SED.
N.B . — In order to avoid unnecessary matter, since it would appear that the
original text of this Act will but seldom , if ever, be required to be referred to in
practice , and in vieiv of the fact that the text of the ivholc Act of igir as amended
ttp to date is printed in Appendix No. V , the original text of this Act n of ign
in the form in which it tvas first passed is here omitted .
THE LAW OF PATENTS IN INDIA
OBJECTS AND REAS0N8 OF THE BILL CULMINATING IN
ACT XXIX OF 1020.
Extract from the M Gazette of India ” of 28th August, 1920, Part V, at page 166.
GOVERNMENT OF INDIA.
Legislative Department.
The following Bill was introduced in the Indian Legislative Council on
the 27th August, 1920: —
No. 31 of 1920.
A Bill further to amend the Indian Patents and Designs Act, 1911.
(Here follows the text of the Bill: providing fora new
section 78A to be inserted in Act II of 1911.)
Statement of Objects and Reasons.
The main object of this Bill is to bring India into the inter-imperial
arrangement for the provisional protection of inventions and designs within the
Empire.
A subsidiary object is to enable valid protection to be obtained for
inventions which owing to war exigencies have been protected only in some
parts of the Empire but would otherwise be invalidated by publication in
other parts.
India lias hitherto been disqualified for admission to the inter-imperial
arrangement provided for section 91 of the United Kingdom Patents .and
Designs Act, 1907, but by virtue of the amendment made in sub-section (5)
of that section by the United Kingdom amending Act of 1919, it is now
possible for India to enter into this mutual arrangement, by which Indian
inventors will gain the advantages of provisional protection for their inventions
for a period of twelve months in almost all parts of the Empire.
Inasmuch as Article 308 of the Treaty of Versailles does not apply to
India, it is at present impossible to adopt the procedure adopted in the United
Kingdom and elsewhere of extending the period of provisional protection under
emergency legislation so as to antedate patents for which application has been
delayed by war conditions.
Several cases have occurred in which valuable British inventions cannot be
protected in India on tin’s account in spite of the fact that under Article 308
valid patents will be obtainable in such cases in Germany.
By making it possible for British and other patentees to obtain valid
Indian patents in these and similar instances, the proposed legislation may be
expected to give an additional impetus to the progress of Indian industries,
by the introduction and establishment of fresh industries which but for the
inducement of the patent grant coupled with the restriction on importation
embodied in section 23 of the present Indian Act, might otherwise be
permanently excluded from /India.
In order to remove these and similar difficulties, it is necessary that the
inter-imperial arrangement should be initiated during the life of the Indian
Patents and Designs (Temporary Rules) Act, 1915, and it is important therefore
that this Bill should proceed at once.
Simla, the 17th August, 1920.
T. H. HOLLAND.
A. P. MUDDIMAN,
Secretary to the Government of India.
APPENDIX V
ACT NO. XXIX OP 1920.
1023
(Passed by the Indian Legislative Counoil.)
(Receive*! the assent of the Governor-General on the 2nd September, 1920).
AN ACT FURTHER TO AMEND THE INDIAN PATENTS AND
DESIGNS ACT, 1911.
Whereas it is expedient further to amend the Indian Patents and Designs
Act, 1911; it is hereby enacted as follows:--
1. Short Title. — This Act may be called the Indian Patents and Designs
(Amendment) Act, 1920.
2. Insertion of new seetion 78-A in Act II of 1911.— After section 78 of
the Indian Patents and Designs Act, 1911, the following heading and section
shall be inserted, namely: —
Reciprocal arrangements with the United Kingdom and other parts of
His Majesty’s dominions.
“ 78 A. Reciprocal arrangements with the United Kingdom and other parts
Of Hie Majesty's dominions. — (1) If His Majesty is pleased l>y Order in Council
to apply such of the provisions of section 91 of the Patents and Designs Act,
1907, as relate to inventions or designs, to British India, then any person who
has applied for protection for any invention or design in the United Kingdom
shall be entitled to a patent for bis invention or to registration of bis design
under this Act, in priority to other applicants; and the patent or registration
shall have the same date as the date of the application in the* United Kingdom:
Provided that—
(ft) the application is made in the case of a patent within twelve
months and, in the case of a design within four months from
the application for protection in the United Kingdom, and
(/>) nothing in this section shall entitle the patentee or the proprietor
of the design to recover damages for infringements happening
prior to the actual date oil which in the case of a patent, his
application is accepted or, in the case of a design, the design
is registered, in British India.
(2) The patent granted for an invention or the registration of design
shall not he invalidated-
(ft) in the case of a patent by reason only of the publication of a
description of, or use of, the invention, or
• (h) in the case of a design, by reason only of the exhibition or use
of, or the publication of a description or representation of,
the design, in British India during the period specified in this
section as that within which the application may he made.
(3) The application for the grant of a patent or the registration of a
design under this section must be made in the same manner as an ordinary
application under this Act : Provided that, in the case of a patent, if the
application is not accepted within twelve months from the date of the applica-
tion for protection ill the United Kingdom, the specification and the drawings
(if any) supplied therewith shall be open to public inspection at the expiration
of that period.
(4) Where it is made to appear to the Governor-General-in-Council
that the legislature of any other part of His Majesty’s dominions has made
satisfactory provision for the protection of inventions or designs patented or
registered in British India the Governor-General-in-Council may. hy notification
in the ” Gazette of India,” direct that the provisions, if any, as may he set out
in such notification, shall apply for the protection of inventions or designs
patented or registered in that part of His Majesty’s dominions.”
1024
THE LAW OF PATENTS IN INDIA
OBJECTS AND REA80N8 OF THE BILL CULMINATING
IN ACT VII OF 1830.
Extract from the “ Gazette of India ” dated 22nd September, 1928.
Bills introduced in the Council of State and Legislative Assembly, Reports of
Select Committee presented to the Council and Assembly and Bills
published under Rule 18 of the Indian Legislative Rules.
GOVERNMENT OF INDIA.
Legislative Department.
The following Bill was introduced in the Legislative Assembly on the
17th September, 1928: —
L. A. Bill No. 33 of 1928.
A Bill to amend the Indian Patents and Designs Act, 1911, for certain purposes.
(Here follows the text of the Bill).
STATEMENT OF OBJECTS AND REASONS.
The existing Indian Patents and Designs Act, 1911 (II of 1911) was
passed in 1911 aiid came into effect in 1912. Experience has indicated a
number of directions in which amendments are required’, and it is now proposed
to revise it. The amendments which it is desired to make are drawn from
several sources. A few of them are taken from the British Act of 1907 (on
which the present Indian Act is based) and were omitted from the Indian Act
as they were not considered necessary in the conditions then existing in India.
A considerable number are based on the provisions of the British Patents and
Designs Act of 1919 which represented a fairly general revision of the 1907
Act in the light of the experience gained from its working. Others are designed
to remove defects which experience in India lias revealed and a few drafting
amendments have been added. The amendments are explained in the detailed
notes on clauses below: —
NOTES ON CLAUSES.
Clause 2 («).—' The existing definition admits of some ambiguity; the
proposed definition is based on that adopted in the British Act of 1919.
(&).—' The revised definition of “ patentee M substitutes the registered
owner for the beneficial owner, and follows the definition adopted in the
United Kingdom in 1919.
(c). — Thd amendment is designed to bring the definition into line with
section 43(1) of the Act.
Clause 3. — In the case of applications comprising more than one invention
it is sometimes necessary to submit amended applications for each invention
and the Controller has discretion under section 5(1) to grant to such separate
applications the date on which they are amended. If the sub section is revised
in the maimer proposed, the Controller will have the power to grant the date
of the original application to the separate subsequent applications.
Clause 4. — tinder section 8 of the Act the Govcruor-Geneial-in-Council can
direct the Controller to refer the specification for enquiry after the acceptance
of an application and before sealing a patent hut in the absence of opposition
a patent cannot he refused as a result of such enquiry. Tlio section has
therefore proved to he valueless.
Clause 5. — Section 9(1) of the Act allows a period of three months within
which a notice of opposition can be entered. This period has proved inadequate
in some cases, and it is proposed to add to this period the time required to
supply a copy of the specification. The amendment proposed follows a general
legal principle.
Clause 6(1) . — The amendment will enable the Controller to proceed with
an application for a patent when the applicant has assigned it to another party
and refuses to proceed with the application or when disputes arise between joint
applicants. It follows in substance the provision made in the United Kingdom
Act of 1919.
APPENDIX V
1025
Clause 6(2) (i). — This is consequential to the amendment in clause 4.
(ii). — The first amendment makes clause (r/) of section 10(2) applicable
to any case where a patent cannot be sealed within the time ordinarily allowed.
The second amendment is based on an existing provision in the Patents and
Designs Rules which has proved satisfactory.
Clause 7. — The object is to make the time when proceedings can be
taken in respect of an infringement more definite.
Clause 8. — The object is to enlarge the provision contained in section
13(2) so as to enable a patent to he given to the true inventor not merely in
case where the Court has revoked the patent, hut also in cases where tho
Controller has refused a patent on account of the opposition of the true
inventor.
Clause 9(a). — This amendment will extend the period of future patents
from 14 years to 16 years, following the recommendations of the Empire Patents
Conference and the alteration made in the British Law in 1919.
(f») This amendment has the effect of extending the period of existing
patents from 14 to 16 years. It- also makes necessary provision for the protection
of licences and other parties who might be adversely affected by the change.
Clause 10(a). —The advertisement of a petition for extension of a patent
before actually filing it as provided in section 15(1) of the Act is unnecessary.
The amendment will make it- possible to call on the patentee to advertise his
application after filing his petition.
(h) Fees are already charged for opposition to grants, amendments or
restoration of patents, and it is desirable that a fee should be levied for
opposition to an extension of a patent. A fee is levied in similar cases in.
the United Kingdom.
(/■) In view of the enlargement of the original period of patents from 14
to 16 years, it is proposed following tho Rritish Act of 1919, to reduce tho
terms for which extensions can be granted.
Clause 11.— This amendment introduces a new provision which will enable
a patentee to add to his original patent improvements having the same term
as the original patent without incurring the expense involved in taking out
separate patents.
Clause 12. — Under section 18 a Court can permit a patentee to amend
his specification only by way of disclaimer. It is proposed to extend the power
of the Court so as to permit it to allow a patentee to amend his specification
also by way of correction or explanation.
Clause 13. This is a verbal amendment which follows the Rritish Act,
and makes the time for the grant of relief under section 19 of the Act more
. precise.
Clause 14. — The words deleted appear in a modified form in the proposed
new sub-section (4) of section 63 (see clause 26.)
Clause 15. — Under the existing Act (government have the right to use
any invention either without payment or on such terms as they may consider
reasonable. Tbe new provision maintains the existing position where the
patentees are (Sovernriiont Servants and the patent is related to their oflieial
work, but gives patentees in other cases 4 lie right of reference to a Court, of
Law for the settlement of the terms that are to he applicable when the
(ffovermnent use their patent.
A new section has been introduced on the lines of section 30 of the
United Kingdom Act of 1907 for the assignment of inventions relating to
instruments, or munitions of war to (lovernment, and for the maintenance of
secrecy where necessary in respect of inventions and patents so assigned.
Clause 16. — The object of the first amendment is to make the main
ground of application for the grant of compulsory licence or the revocation
of a patent more clear.
The amendment to section 22(4) and the first two amendments to sort ion
22(5) are consequential to the amendment to section 22(1).
As the present Act came into force in 1912, the words “ before or after
the commencement of the Act M in section 22(5) are no longer necessary.
It is proposed to delete sub-section (6) of section 22 and add a new
section in similar terms but applicable both to sections 22 and 23; vide clauso 18.
129
1086
THE LAW OF PATENTS IN INDIA
Clause 17.— Under section 23(2) if the Govemor-General-in-Council is
satisfied that the allegations contained in an application for the revocation
of a patent are correct, he can make an order revoking the patent. The
amenoment is intended to empower him to grant a licence or an exclusive
licence to the applicant if such remedies are justified in the circumstances of
the case. The British Act also provides for such remedies.
Clause 18. — The amendments to section 23(2) necessitate the enlargement
of the provision at present contained in section 22(6) so as to apply also to
the grant of licences under section 23.
Clause 19. — This is a drafting amendment.
Clause 20. — Under the existing law the Court is required in a suit for
infringement to call in the aid of an assessor on the request of either of the
parties to the proceedings. The effect of the amendment will be that the
Court will not be required to call in assessors unless all the parties agree,
but it may if it thinks fit call in an assessor on the application of either party
or without any application.
Clause 21. — The amendment provides for the possibility of granting relief
in infringement actions in respect of valid claims in spite of the inclusions
in the patent of invalid claims. The object is to prevent patentees from being
penalised for hotia fide mistakes. The amendment follows the provisions of
the British Act of 1919.
Clauso 22. — 'The object of these amendments is to extend the liability
imposed on patentees to persons who have a beneficial interest in patents.
The amendments follow the English law.
Clause 23. — The amendment to clause (a) of section 44 brings the section
into lino with section 43(1).
The existing section 44 can be used to extend the copyright of a design
if supplementary registration is effected in another class for the same design.
This was obviously not the intention. The duration of the . supplementary
registration of a design should not exceed that of the original design, and
the amendment to clause (h) of section 44 provides fen 1 this.
Clause 24. — The existing law is obscure as to the extent to which parties
ure entitled to secure cancellation of designs. The proposed section 51 A. which
is based on the analogy of patents, will make the position clear.
The object of the new section 51 ft is to bring the law relating to designs
in so far as rights against the Crown are concerned into line with the law
relating to patents.
Clause 25. — This is consequential on the insertion of the new section 51A.
Clause 26(oi). — The alterations in sub-sections (1) and (2) of section 63
are essentially of a drafting character.
The object of the new sub-section (4) of section 64 is to prevent the
admission in evidence, save in exceptional circumstances, in proof of the title
t.o a patent or design, of a document or instrument not entered in the register
of the Patent Office. This sub-section follows the provisions of the English
Law of 1919 and replaces the provision at present contained in section 20(4)
(see note on clause 14).
Clause 27. — The object of the amendment is to make it clear that the
section provides only for applications which relate to the rectification of errors
in the register and that questions regarding the merits of patents or designs
cannot be raised in connection with applications under it. It is undesirable
that applications of this character should go before the High Court in the
first instance, and it is proposed to make the Controller the competent
authority to dispose of them, an appeal lying from his order to the High Court.
Clause 28. — This is based on the British Act and provides for an appeal
to the Governor-General-in-Council against the Controller’s decision.
Clause 29. — Under section 65 of the Act the Controller has power to
award costs in any proceedings before him. The clause will enable the
Controller or the Court dealing with parties offering opposition or applying
for revocation or preferring appeals to require security for the cost of
proceedings, where they do not reside or carry on business in British India.
Clause 30(1). — Under the existing Act fees are payable in cash. The
clause will enable fees to be paid through treasuries or the Imperial Bank,
if necessary.
APPENDIX V
1027
The new sub-clause (<vr) is consequential on the insertion of the now
section 21 A; vith clause 15.
(2) Under section 77(2) of the Act all rules are made after previous
publication. This is not considered desirable in the case of rules made for
ensuring secrecy of patents relating to munitions of war. The new provision
follows the British Act.
Clause 31. — The first amendment which extends the period for applications
under reciprocal arrangements in the case of designs is bused on a recommenda-
tion made by the last International Conference at The Hague. A similar change
has) recently been made in Great Britain.
The second amendment will enable reciprocal arrangements to be mude
between British India and Indian States.
Clause 32. — The existing scale of fees has remained unchanged since 1912.
Only valuable patents are kept on for a long number of years, and iu such
cases the amount of the fees is normally small compared with the profits
earned. A slight increase in the fees has been proposed for the 9th. 13th and
14th year of a patent. It is proposed to fix the fees for the 15th and 16th
year of patents at Hs. 150 (vuU clause 9). A similar rate has been prescribed
for extended patents aud for new patents granted after the original patents
have expired.
Sd. A. C. MoWAlTWR^
L. GRAHAM,
12th September, 1928. Secy, to the Government of India.
1028 THE LAW OF PATENTS IN INDIA
REPORT OF THE SELECT COMMITTEE ON THE BILL
CULMINATING IN ACT VII OF 1930.
Extracts from the “ Gazette of India,’ * Part V, dated 28th September, 1929.
Bills introduced in the Council of State and Legislative Assembly, Reports of
Select Committees presented to the Council and Assembly and Bills
published under Rule 18 of the Indian Legislative Rules.
GOVERNMENT OF INDIA.
Legislative Assembly Department.
The following Report of the Select Committee on the Bill further to
amend the Indian Patents and Designs Act, 1911, for certain purposes, was
presented to the Legislative Assembly on 25th September, 1929.
Paper Noe. 1-IV. — We, the undersigned Members of the Select Committee
to which the Bill further to amend the Indian Patents and Designs Act, 1911,
foi certain purposes was referred, have considered the Bill and the papers
noted in the margin, and have now the honour to submit this our Report,
with the Bill as amended by us annexed thereto.
Clause (3) (a) (in ), — In the new proviso we have substituted the word
•‘other” for the word “additional” to make the meaning clear.
We have also made an amendment of substance, designed to avoid
hardship to applicants. Unless the Controller has power to fix later dates, as
proposed by us, it may happen that the lime for acceptance of additional
applications prescribed in sub-section (4) of section 5 will be over before these
applications can be properly examined and accepted. We have further provided
that the date borne liy the application shall for all purposes be deemed to be
the date on which it was made. The amendment follows the English practice.
At the same time, we consider it advisable that the Controller's discretion in
fixing dates should be curtailed, and we recommend that a rule should be made
under section 77 restricting the fixing of the date of an additional application
to within one mouth of the date of the original application. If this is found
to be insufficient in practice, the period may be extended.
Clause 3 (6). — It has been held that ail application under section 5(4) for
extension of time made after the expiry of twelve months from the date of
the application cannot be granted inasmuch as the application will already
have become void. We understand that it is convenient from the administrative
point of view that such applications should he granted, and this sub-clause is
designed to permit of this.
Clause 5. — Wo felt that there was substance in the criticisms of clause
5 on the ground of ^vagueness, and have preferred simply to substitute an
extension from threo to four months fur the more intricate provision relating
to the time requisite for obtaining copies of the specification. We are of
opinion that that time is fairly represented by one month but hope that the
operation of this new provision will bo carefully watched with a view to
ascertaining its adequacy.
Clause 6(1). — We have introduced some drafting amendments designed
to indicate that a direction by the Controller is not a “ decision ” such as is
referred to in section 9(3) of* the Act.
Clause 6(2) (ii ). — We have made an addition necessitated by the fact
that, various provisions of section 10 of the Act allow various periods for
sealing a patent.
Clause 9(c) is designed to achieve, m utatU mutamUa, an object similar
to that mentioned above in connection with clause 3 (b).
Clause 15. — Opinions received on proposed section 21 disclose some
apprehension that irresponsible persons may be permitted to issue written
authorisations on behalf of Government departments. We have preferred to
revert to the precise wording of the proviso to existing section 21, which does
not appear to have caused any inconvenience in practice.
* We have also, in deference to opinion received, provided in sub-sections
(2) and (3) of proposed section 21 that notice should be given to the inventor
or patentee.
APPENDIX V
1029
The other change# in this clause are of a drafting nature.
Clauses 24 and 27(c). — We do not consider that the interposition of
the Governor-Geueral-in-Couucil between the Controller and the High Court in
the matter of references under proposed section 51 A (2) and proposed sub-section
(3) of existing section 64 serves any useful purpose. We have therefore omitted
this provision in each case.
Clause 28A. — We have extended the period of limitation for appeals under
section 70 from two to three months. The shorter period has in practice been
found too short for appeals in India and tn fortiori for overseas appeals.
2. Our attention has been directed by the opinions received to the fuct
that section 7 of the Statute 7 Edward VII c. 29 contains more elaborate
provisions for preliminary examination of an application than those contained
in the Indian Act. We have reason to believe that an amplification of the
Indian Act on the lines of the British Statute would be conducive to the
interests of applicants, who. in existing conditions, possibly suffer loss by being
encouraged to expend money on inventions when applications for patents in
respect of them iiave not been summarily rejected. We desire to place on
record our opiuion that this question deserves careful examination by Government.
3. Opinions received also disclose a considerable volume of opinion in
favour of registration of trade marks. We understand that the absence of such
registration is one of the reasons which prevent India participating in the
International Convention for the Protection of Industrial Property and we have
reason to believe that India's want of participation in this Convention affects
prejudicially the interests of Indian inventors in foreign countries in certain
matters. We feel, however, that this subject is not strictly germane to the
present Bill and content ourselves with the suggestion that it be examined
by Government.
4. The Bill was published as follows:
IN ENGLISH.
•
Gazette.
Date.
Gazette of India
... ... ... ...
17th September, 1928
Fort Saint George Gazette
2nd October, 1928
Bombay Government
Gazette
1st November, 1928
Calcutta Gazette
25th October.' 1928
United Provinces Gazette
3rd November, 1928
Punjab Government Gazette
23rd November, 1928
Burma Gazette
... ... ...
3rd November. 1928
Central Provinces Gazette
6th October, 1928
Assam Gazette
3rd October, 1928
Bihar & Orissa Gazette
JOth October. 1928
Coorg District Gazette
1st November, 1928
North West Frontier
Gazette ...
IN THE VERNACULARS.
2nd November, 1928
Province.
Language.
Date.
Tamil
1 st January, 1929
Telugu
8th January, 1929
Madras
Hindustani
8th January, 1929
Kanarese
11th December, 1928
Malaysia m
8th January, 1929
Marathi
6tli November, 1928
Bombay
Gujratlii
6th November, 1928
Kanarese
6th November, 1928
Coorg
Kanarese
2nd January, 1929
5. Wc think that the Bill has not been so altered as to require
rc-publication, and wc recommend that it be passed as now amended.
I T’KSHOTAMl) AS THAKCHDAS.
B. N. M1TRA.
LALCHAND NAVALRAI.
GANGANAND SINGHA.
M. ANWAR UL-AZIM.
The 21st September, 1929.
1030
THE LAW OF PATENTS IN INDIA
ACT NO. VII OF 1930.
[Passed by the Indian Legislature.!
(Received the ussent of the Governor-General on the 16th Murcli, 1930).
AN ACT FURTHER TO AMEND THE INDIAN PATENT8 AND DESIGNS
ACT, 1911, FOR CERTAIN PURPOSES.
Whereas it is expedient further to amend the Indian Patents and Designs
Act, 1911, for the purposes hereinafter appearing: It is hereby enacted ns
follows
1. Short title and oommenoamant.— (1) This Act may be called the
Indian Patents and Designs (Amondment) Act, 1930.
(2) It shall come into force on the 1st day of July, 193Q.
2. Amendment of seetion 2, Act II of 1911.— In section 2 of the Indian
Patents and Designs Act, 1911 (hereinafter referred to as the said Act),--
(а) for clause (5) the following clause shall be substituted, namely:—
“ (6) * design ’ means only the features of shape, configuration, pattern
or ornament applied to any article by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the finished
urticle appeal to and are judged solely by the eye; but does not include any
mode or principle of construction or anything which is in substance a mere
mechanical device, and does not include any trade mark as defined in section 478,
or property mark as defined in section 479, of the Indian Penal Code:”;
(б) for clause (12) the following clause shall be substituted,
namely
“ (12) ‘ patentee * means the person for the time being entered on the
register of patents kept under this Act as the grautee or proprietor of the
patent:"; and
(c) in clause (14), for the words “new and original" the words
41 new or original ” shall he substituted.
3. Amendment of section 5, Aet II of 1011. — In section 5 of the said Act, —
(a) in sub-section (1), —
(V) in clause (6) , the words “or relate to more than one invention M
shall he omitted ;
(il) after clause (**) the following shall he inserted, namely: —
“ or
(/’) the specification relates to more than one invention,"; and
(if/) the following proviso shall he added to the suh.section, namely:-
“ Provided' that, when a specification comprises more than uue
invention, the application shall, if the Controller or the applicant
so requires, be restricted to one invention and the other inven-
tions may be made the subject-matter of fresh applications; and
any such fresh application shall be proceeded with as a
substantive application, but the Controller may, in his discre-
tion, divcct that any such fresh application made before the
acceptance of the original application shall bear the date of the
original application or such later date as he may fix, and the
fresh application ahull be deemed, for the purposes of tills
Act, to have been made on the date which it bears in accordance
with such direction." ; and
( b ) in sub-section (4), for the proviso the following proviso shall be
substituted, namely: —
“ Provided that where, before, or within three months after, the
expiration of the said period of twelve months, a request is made
to the Controller for an extension of time by any period not
exceeding three months, the application shall, on payment of
the prescribed fee, be continued or revived, as the case may be,
during, but not beyond, the period of extension so requested. 9 '
4. Omission of section • from Act II of 1011.— Section 8 of the said
Act shall bo omitted.
APPENDIX V
1031
5. Amofldmont of Motion 0, Aot II or 1011. — In sub-section (1) of
section 9 of the said Act, for the word “ three ” the word 44 four " shall be
substituted.
6. Amendment of section io, Act II of 1911.— (1) After sub-section (1)
of section 10 of the said Act the following sub-section shall be inserted, namely: —
“ (1A) Notwithstanding anything contained in sub-sectiou *(1),
where —
(a) an applicant has agreed in writing that on the grant to him
of a patent he will assign it to another party or to a joint
applicant and refuses to proceed with the application, or
( b ) disputes arise between joint applicants as to proceeding with an
application,
the Controller, if he is satisfied of the existence of such agreement or, in any
other case, that any joint applicant or applicants ought to he allowed to
proceed alone, may direct that such other party or joint applicant nr Applicants
may proceed with the application accordingly and may grant a patent to him
or them, as the case may be:
Provided that —
(0 the Controller shall not give any such direction until every party
interested 1ms had an opportunity of bring beard bv him, and
(u) an appeal from any such direction shall lie to the Governor (Icneral-
m-CounciI.’ v
(2) In sub-section (2) of the same section,—
( i) in clause (b) of tl.c proviso, the words 14 or by a leference under
section 8,’’ shall he omitted ; and
(»7) in clause (</), for the words 44 in consequence of t he neglect or
failure of the applicant to pay any fee M the words “ for any
reason” shall be substituted; after the words “ allowed by ”
the words “ any of the foregoing provisions of M shall lie
inserted ; and for the words 44 to such an extent as may he
prescribed •' the words 41 to the extent applied for but not
exceeding three months M shall be substituted.
7. Amendment of Motion 11, Act II of 1911.— In section 11 of the said
Act, for the. words 44 publication of the specification ** the words 44 advertisement
of the acceptance of the application M shall be substituted.
8. Amendment of seotion 13, Aot II of 1911.— For sub-section (2) of
section 13 of the suid Act the following sub section sliall.be substituted, namely:
44 (2) Where a patent lias been revoked by the High Court, on the ground
that it has been obtained in fraud of the true and first inventor, or where the
grant of a patent has been refused by the Controller under section 9 oil the
ground stated in clause (a) of sub-section (1) of that section, the Controller
may, oil the application of the true inventor or his legal representative or
assign made in accordance with the provisions of this Act, grant to him a
patent for the whole or any part of the invention and the patent so
granted shall bear the same date as the patent so revoked or, in the case of
a patent the grant of which has been refused, the same date ns would have
been borne by the patent if it bud been granted:
Provided that no suit shall be brought fur any infringement of the patent
so granted committed before the actual date when such patent was granted. "
9. Amendment of Metion 14, Aet II of 1S11. — In section 14 of the said
Act,—
(n) in sub-section (1), for the word “ fourteen *’ the word “sixteen”
shall be substituted;
(b) after the same sub-section the following sub-sections shall be
inserted, namely : -
44 (1A) Any patent the original term of which had not expired on
or before the 1st day of July, 1930, shall have effect ns if
the term mentioned therein was sixteen years instead of fourteen
years, and any licence existing at that date which has been
granted for the term of the patent shall he treated ns having
been granted for the term as so extended if the licensee so
desires.
1038
THE LAW OP PATENTS IN INDIA
(IB) Where any party to a contract with the patentee or any other
person entered into before the 1st day of January, 1030, is
subjected to loss or liability by reason of the extension of
' the term of any patent under this section, any District Court
having jurisdiction may determine in what manner and by
which parties such loss or liability shull be borne/’; and
(r) in sub-section (2) , for the proviso the following proviso shall be
substituted, namely: —
“ Provided that where the patentee, before, or within three months
after, the expiration of the time for payment, applies to the
Controller for an extension of time by any period not exceeding
three months, the patent shall, on payment of such addi-
tional fee as may be prescribed, he continued or revived, as
the case may be, during, but not beyond, the period of
extension applied for.”
10. Amendment of section is, Act ll of 1911.— In section 15 of the said
Act, -
(a) iii sub-section (1), the words “after advertising in the prescribed
manner his intention to do so,” shall he omitted; and after
the words “ prescribed fee ” the following shall he added,
namely : —
“ and must be advertised by the patentee within the prescribed time
and in the prescribed manner;”
(b) in sub-section (2), after the word “may” the words “within
such time as may he prescribed and on payment of the pre-
scribed fee,” shall he inserted; and
(r) in sub-section (6), for the words “seven” and “fourteen” the
words “ five ” and “ ten ” shall he substituted, respectively.
11. Insertion of new section ISA in Aet II of 1911.— After section 15 of
the said Act the following section shall he inserted, namely: —
“ 15A. Patents Of addition. — (1) Where a patent for an invention has
been applied for or granted, ami the applicant or the patentee, as the case may be,
applies for a further patent in respect of any improvement in or modification ot
the invention, he may in his application for the further patent request that the
term limited in that patent for the duration thereof be tne same as that of the
original patent or so much of that term as is unexpired, and, if he does so, a
patent (hereinafter referred to as a patent of addition) may he granted for such
term as aforesaid.
(2) Save as otherwise expressly provided by this Act, a patent of
addition shall remain in force as long as the patent for the original invention
remains in force, but no longer, and in respect of a patent of addition no fees
shall he payable fot* renewal:
Provided that if the patent for the original invention is revoked, then
the patent of addition shall, if the authority by which it is revoked so orders,
become an independent patent, and the fees payable, and the dates when they
become payable, shall he determined by its date, hut its duration shall not
exceed the unexpired term of the patent for the original invention.
(3) The grant- of a patent of addition shall he conclusive evidence that
the invention is a proper subject for a patent of addition, and the validity of
the. patent shall not be questioned on the ground that the invention ought to
have been the subject of an independent patent.”
12. Amendment of section 18, Aet II of 1911. — In section 18 of the said
•Act, after the word “ disclaimer ” the words “ correction or explanation ” shall
he inserted.
13. Amendment of motion 19, Aot 1 1 of 1911. — In section 19 of the said
Act, for the words “ before the disclaimer, correction or explanation ” the words
“ before the date of the decision allowing the amendment ” shall be substituted.
14. Amendment of eeetion 20, Aet 1 1 of 1911.— In sub-sect ion (4) of sec-
tion 20 of the said Act, the words “ and, unless such copies have been so
supplied, such deeds, licences or other documents shall not be received as
evidence of any transaction affecting a patent ” shall, he omitted.
APPENDIX V
1033
15. Substitution of now sections for section 21, Act II of ion.— For
section 21 of the said Act the following sections shall he substituted, namely: —
“21. Patent to bind Crown. — (1) Subject to the other provisions of this
section, a patent shall have to all intents the like effect as against His Majesty
the King as it has against a subject.
, (2) The officers or authorities administering any department of the
service of His Majesty may, by themselves or by such of their agents, contractors
or others as may be authorised in writing by them, at any time after the applica-
tion, and after giving notice to the applicant or patentee, make, use or exercise
the invention for the service of the Crown on such terms as may, either before
or after the use thereof, he agreed on. with the approvnl of the Governor-Genera 1-
in-Council, between such officers or authorities and the applicant or patentee, or,
in default of agreement, as may be settled in the manner hereinafter provided.
And the terms of any agreement or licence concluded between the applicant or
patentee and any person other than such officers or authorities, shall be inopera-
tive so far as concerns the miking, use or exercise of the invention for the
service of the Crown.
(3) Where an invention which is the subject of any patent has, before the
date of the patent, been duly recorded in a document by, or tried by or on
behalf of, the officers or authorities administering any department of the service
of His Majesty (such invention not having been communicated directly or
indirectly by the applicant or patentee), such officers or authorities, or such of
their agents, contractors, nr others, as may he authorised in writing by them,
may, afte^ giving notice to the applicant or patentee, make, use nr exercise
the invention so recorded or tried for the service of the Crown, free of any
royalty or other payment to the applicant or patentee, notwithstanding the
existence of the patent. If, in the opinion of such officers or authorities, the
disclosure to the applicant or patentee, as the case may he, of the
document recording the invention, or the evidence of the trial thereof, if
required, would he detrimental to the public interest. it may he made
confidentially to counsel on behalf of the applicant or patentee, or to any
independent expert mutually agreed upon.
(4) III the event of any dispute as to t lie making, use or exercise of an
invention under this section, or the terms therefor, or as to the existence or
scope of any record or trial as aforesaid, the matter shall he referred to the High
Court for decision, who shall have power to refer the whole matter or any
question or issue of fact arising thereon to he tried before a special or official
referee or an arbitrator upon such terms as it may direct. The Court, referee
or arbitrator, as the case may he. may, with the consent of the parties, take
into consideration the validity of the patent for the purposes only of the reference
and for the determination of the issues between the applicant or patentee and
such officers or authorities. The Court, referee or arbitrator, further, in settling
the terms as aforesaid, shall he entitled to take into consideration any benefit
or compensation which the applicant or patentee, or any other person interested
in the patent, may huve received directly or indirectly from the Crown or from
such officers or authorities in respect of such patent :
Provided that, if the inventor or patentee is a Government servant and
the subject-matter of the invention is certified by the Governor-General-in-Council
or Local Government to he connected with work done in the course of such
service, any such dispute shall be settled by the Governor-General-in-Council
after hearing the applicant or patentee and any other person having nri interest
in the invention or patent.
(5) The right to use an invention for the services of the Crown^ under
the provisions of this section, or any provisions for which this section is
substituted, shall include, and shall he deemed always to have included, the
power to sell any articles made in pursuance of such right which are no longer
required for the services of the Crown.
(6) Nothing in this section shall affect the right of the Crown or of
any person deriving title directly or indirectly from the Crown to sell or use any
urticles forfeited under any law for the time being in force relating to customs
or excise.
21A. Assignment of patent to the Secretary of Stato for India In
Couneil.— (1) The inventor of any improvement in instrument s or munitions
130
1034
THE LAW OF PATENTS IN INDIA
of war may (either for or without valuable consideration) assign to the
Secretary of State for India in Council on behalf of His Majesty all the benefit
of the invention and of any patent obtained or to be obtained for the invention;
and the Secretary of State for India in Council may be a party to the assignment.
(2) The assignment shall effectually vest, the benefit of the invention
and patent in the Secretary of State for India in Council on behalf of His
Majesty, and all covenants and agreements therein contained for keeping the
invention secret and otherwise shall be valid and effectual (notwithstanding any
want of valuable consideration), and may be enforced accordingly by or on behalf
of the Secretary of State for India in Council.
(3) Where any such assignment lias been made, the G ovcrnor -General-in-
Council may, at any time before the publication of the specification, certify to
the Controller that, in the interest of the public service, the particulars of the
invention and of the manner in which it is to be performed should be kept
secret.
(4) If the Governor-General-in-Council so certify, the application and
specifications, with the drawings (if any) and any amendment of the specification
and any copies of such documents and drawings, shall, instead of being left in the
ordinary manner at the Patent Office, be delivered to the Controller in a packet
sealed by authority of the Governor-General-in-Council.
(5) The packet shall, until the expiration of the term during . which a
patent for the invention may lie in force, lie kept sealed by the Controller, and
shall not be opened save under the authority of an order of the Governor-
General-in-Council.
(6) The sealed packet shall he delivered at any time during the
continuance of the patent to any person authorized by the Governor-General-in-
Council to receive it, and shall, if returned to the Controller, he again kept
sealed by him.
(7) On the expiration of the term of the patent, the sealed packet shall
he delivered to the Governor-General-in-Council.
(8) Where the Governor-General-in-Council certifies as aforesaid after
an application for a patent has been left at the Patent Office hut before the
publication of the specification, the application and specifications, with the
drawings (if any), shall be forthwith placed in a packet sealed by authority
of the Controller; and the packet shall be subject to the foregoing provisions
respecting a packet sealed by authority of the Governor-General-in-Council.
(9) No proceeding by petition or otherwise shall lie for revocation of
a patent granted for an invention in relation to which a certificate has been given
by the Governor-General-in-Council as aforesaid.
(10) No copy of any specification or other document or drawing, by this
section required to lie placed in a sealed packet, shall in any manner whatever
lie published or open to the inspection of the public, but, save as otherwise
provided in this section, the provisions of this Act shall apply in respect of any
such invention and patent as aforesaid.
(11) The Governor-General-in-Council may at any time waive the benefit
of this section with respect to any particular invention, and the specifications,
documents and drawings shall be thenceforth kept and dealt with in the ordinary
way.
(12) The communication of any invention for any improvement in instru-
ments or munitions of war to the Secretary of Stale for India, in Council or the
Governor-General-in-Council or to any person or persons authorised by the
Secretary of State for India in Council or t he Governor-Gencral-in-CoHincil to
investigate the same or the merits thereof, shall not, nor shall anything done for
the purposes of the investigation, be deemed use or publication of such invention
so as to prejudice the grant or validity of any patent for the same.”
16. Amendment of section 22, Act II of 1011. — In section 22 of the said
Act, —
( a ) in sub-section (1), for the words “the reasonable requirements of
the public with respect to a patented invention have not been satisfied ” the
words “ the demand for a patented article in British India is not being met to
an adequate extent and on reasonable terms** shall be substituted;
( h ) in sub-section (4), for the words “ the reasonable requirements of
the public with reference to the patented invention have not been satisfied 99 the
words “ the demand for the patented article in British India is not being met to
AM>£NDiX V
1035
An adequate extent and on reasonable terms” shall he substituted; and for the
words “ the reasonable requirements of the public will nut be satisfied ” the
words “ the demand will not be adequately met ” shall he substituted;
(r) in sub-section (5), —
(/) for the words “ the reasonable requirements of the public shall not
be deemed to have been satisfied ” the wolds ** the demand for
a patented article shall not be deemed to have been met to an
adequate extent and on reasonable terms ” shall be substituted;
(ii) in clause (a ) , the words “ or the demand for the patented article
or the article produced by the patented process is not reasonably
met” shall be omitted; and
(iii) in clause ( h ), the words “ before or after the commencement of
this Act” shall he omitted; and
(//) sub-section (6) shall he omitted.
17. Amendment of section 23, Act II of 1911. In section 23 of tho
said Act,—
(a) in sub-section (l), for the words “for the revocation of the
patent” the words “ for relief under this section” shall he substituted; and
(h) in sub-section (2), after tlu* words “may make an order” tho
letter and brackets “ (a) ” shall he inserted, and after clause ( ii) the following
shall be added, namely: -
“ or
{b) ordering the patentee to grant a licence to the applicant which may
be a licence exclusive to him or otherwise as the (h>vcriior-Urneral-in»CouuciI
may direct.”
18. Insertion cf new section 23A in Act II of 1811- — After section 23 of
the said Act the following section shall he inserted, namely:
“ 23 A. Operation of order under section 22 or section 23.— An order of
the High Court under section 22 or of the (Jovernor-tJencrul -in-Council under
section 22 or section 23, directing the grant of any licence, shall, without prejudice
to any other method of enforcement-, operate as if were embodied in a deed
granting a licence and executed by the patentee and all other necessary parties.”
19. Amendment of section 28, Act II of 1911. — In clause (7) of sub-
section (1) of section 26 of the said Act, for the words “a pait,” in both places
where they occur, the words “ the whole or a- par! ” shall be substituted.
29. Amendment of section 35, Act II of 1811. -In subsection (1) of
section 35 of the said Act. for the words “either of” the word “all” shall
he substituted.
21. Insertion of new section 35A in Act II of 1911.— After section 35 of
the said Act the following section shall he inserted, namely:
“ 35A. Grant of relief in respect of particular claims.— Notwithstanding
anything contained in section 19. if the Court in any action for infringement
of a patent finds that any one or more of the claims in the specification in
respect of which the infringement is alleged are valid, it may, subject to its
discretion as to costs and as to the date from which damages should bo
reckoned and to such terms as to amendment as if may deem desirable, grant
relief in respect of any of such claims which are infringed without regard to
the invalidity of any other claim in the specification. Iii exercising such
discretion the Court may take into consideration the conduct of the parties in
inserting such invalid claims in the specification or permitting them to remain
there.”
22. Amendment of section 36, Act II of 1911.— In section 36 of the said
Act,—
(1) for the words “ to be the patentee of an invention ” the words ** to
have an interest in a patent” shall he substituted ;
(2) for the words “ unv legal rights of the person making such threats ”
the words “ the patent ” shall he substituted; and
(3) for the proviso the following shall be substituted, namely: —
“ Provided that this section shall not apply if an action for infringement
of the patent is commenced and prosecuted with due diligence.”
1656 THE LAW OF PATENTS IN INDIA
23. Amendment of section 44, Aot II of 1011.— Iu section 44 of the
said Act, — . . ■ ,
(1) in clause (a), fur the words ‘‘new und original design ? the words
“new or original design*’ shall be substituted; and
(2) after clause (6) the following proviso shall be added, namely:—
“ Provided that such subsequent registration shall not extend the period
of copyright in the design beyond that arising from previous registration.”
24. Insertion of new eeotione 51 A end SIB in Aot II of 1911.— After
section 51 of the said Act the following sections shall be inserted, namely : —
“ 51 A. Conoellotlon of registration. — (1) Any person interested may
present a petition for the cancellation of the registration of a design-
la) at any time after the registration of the design, to the High
Court on any of the lollowing grounds, namely: —
(i) that the design has been previously registered in British India ; or
(it) that it has been, published in liritish India prior to the date
of registration ; or
(iii) that the design is not a new or original design; or
(6) within one year from the date of the registration, to the
Controller on either of the grounds specified in sub-clauses (/)
und (it) of clause (a) .
(2) An appeal shall lie from uny order of the Controller under this
section to the High Court, and the Controller may at any time refer any such
petition to the High Court, and the High Court shall decide any petition
so referred.
51B. Registration of designs to bind the Crown.— The provisions of
section 21 shall apply to registered designs as if those provisions were re-
enacted herein and in terms made applicable to registered designs.**
25. Amendment of section 62, Aot II of 1911.— In section 62 of the suid
Act, clause ( b ) shall be omitted.
26. Amendment of section 63, Act II of 1911.— Xu section 63 of the said
Act,—
(а) for sub-sections (1) and (2) the following sub-sections shall be
substituted, namely ; —
“ (1) Where a person becomes entitled by assignment, transmission
or other operation of law to a patent or to the copyright in a
registered design, lie may make application to the Controller
to register his title, and the Controller shall, on receipt of
such application und on proof of title to his satisfaction, register
him as the proprietor of such patent or design, and shall
cause an entry to he made in the prescribed manner in the
register of the assignment, transmission or other instrument
affecting the title.
(2) Where any person becomes entitled as mortgagee, licensee or
otherwise to any iuterest in a patent or registered design, he
may make application to the Controller to register his title,
and the Controller shall, oil receipt of such application and
on proof of title to his satisfaction, cause notice of the interest
to be entered in the prescribed manner in the register of patents
or designs, as the case may be, with particulars of the instru-
ment, if any, creating such interest**; and
(б) after sub-section (3) the following sub-section shall be added,
liuincly : —
11 (4) Except in the case of an application made under section 64, a
document or instrument in respect of which no entry has been
made in the register in accordance with the provisions of sub-
sections (1) and (2) shall not be admitted in evidence in any
Court in proof of the title to a patent or to copyright in a
design or to any interest therein, unless the Court, for reasons
to be recorded in writing, otherwise directs.*’
27. Amendment of section 64, Act II of 1911.— In section 64 of the
said Act,—
(a) in sub-section (1), for the words “A High Court” the words
“ The Controller *’ and for the words “as it may think fit n the
APPENDix V
1037
words “as he thinks fit and rectify the register accordingly ”
shall be substituted, respectively ;
(6) in sub section (2), fur the word “ Court ” the word “ Controller ”
shall bo substituted ;
(c) for sub-section (3) the following sub-section shall be substituted,
namely : —
“ (3) An appeal shall lie to the High Court from any order of the
Controller under this section; and the Controller may reter
any application under this section to the High Court for tiecisiou,
and the High Court shall dispose of any application so
referred.”; and
(</) for sub-section (5) the following sub-section shall be substituted,
namely : —
“ (5) Nothing in this section shall be deemed to empower the
Controller —
(а) to rectify the register ol patents, or to decide any question
relating to a patent, otherwise than for the purpose of correct-
ing a mistake of fact apparent from a reference either to
tho patent itself or to some order of a competent authority
made under any other provision of (his Act, or
(б) to make any sucli order cancelling the registration of a design
as is provided for in section 51 A.”
.28. Amendment of seotion 69, Aot II of 1911.- Section 69 of the said
Act shall be re-nurn bored os sub-section (1) of that section, and to that section
.as so re-numbered the following sub-section shall he added, namely: -
“ (2) An appeal shall tie to the Coveriior-Geiierul-iii Council from
an order of the Controller under this section.”
29. Amendment of section 70, Aot II of 1911. -In section 70 of the said
Act, for the word “two* in both places where it occurs, the word “three”
shall be substituted.
30. Insertion of new seotion 74 A in Aot II of 1911.— After section 74 of
the said Act tlie following section shall be inserted, namely:—
“ 74A. Seourity for oosts. — Where a person giving notice of any opposi-
tion under tins Act or giving notice to the Court ot Appeal from any decision
of the Controller under this Act, neither resides nor carries on business in
British India, the Controller or the Court, as the case may be, may require
such person to give security for the payment of all costs incurred and likely
to he incurred in the proceedings or appeal, as the case may be, and, in
default of such security being given, may disallow the opposition or dismiss the
appeal. ”
31. Amendment of seotion 77, Aot II of 1011 . ■■-In section 77 of the suid
Act, —
(1) after clause (e) of sub section (1) the following clauses shall be
inserted, namely : —
“ (wj for the manner in which fees leviable under this Act may be
paid ;
(ete) lor ensuring secrecy with respect to patents to which section 21A
applies,”; and
(2) after sub-section (2) the following sub-section shall be inserted,
. namely : —
“ (2A) Nothing in sub-section (2) shall apply in the case of rules
made for the purpose specified in clause (tve) of sub-section (1) ; ami uny such
rules may modify any of the provisions of this Act so far as may be necessary
for that purpose.”
32. Amendment of section 78A, Aot II of 1011.— in -section 78A of the
said Act,— a •<*«» .
(1) in clause (a) of the proviso to sub-section (1), for the word
“four” the word “six” shall be substituted; and
(2) in sub-section (4), after the words “His Majesty’s dominions,”
where they first occur, the words “ or of any State in India,” and after those
words where they occur for the second time, the words “ or in that State, as
the case may be,” shall be inserted.
1038
THE Law of PATENTS IN INLlA
33. Aimndmeiit of the 8oltedulo to Aot II of 1911 . — In the Schedule to
the said Act, in the entry specifying the fee payable before the expiration of
the 8th year from the date of a patent, for the figures 44 50 " the figures 41 100 **
shall bo substituted, and for the last five entries the following shall be
substituted, namely : —
Rs.
44 Before the expiration of the 12th year from the
date of the patent ... ... ... ... 150
Before the expiration of the 13th year from the
date of the patent ... ... ... ... 150
Before the expiration of the 14th year from the
date of the patent ... ... ... ... 150
Before the expiration of the 15th year from the
date of the patent ... ... ... ... 150
Provided that the fees for two or more years may be
paid in advance.
On application to extend the term of a patent ... 50
Before the expiration of each year of the extended term of
a patent or of a new patent granted under section 15 ... 150
On application for registration of a design ... ... 3’*
APPENDIX V
1039
A NOTE REGARDING STAMP DUTY PAYABLE IN
BRITI8H INDIA IN RE8PECT OF THE ASSIGNMENT
OF A PATENT.
(X. 7 J, — See page 590 above).
The following are certain relevant- provisions of (lie Indian Stamp Act,
1899 ; —
THE INDIAN STAMP ACT, 1699.
(Act II Of 1899.)
* * * %
CHAPTER II.
STAMP DUTIES.
A. — Of the Liability of Instruments to Duty.
Section 3. Instruments chargeable with duty. - Subject to the provisions
of this Act and the exemptions contained in Schedule 1, the following instruments
shall be chargeable with duty of the amount indicated in that schedule as the
proper' duty therefor, respectively, that is to say
(a) every instrument mentioned in that schedule which, not having
been previously executed by any person, is executed in British
India on or after the first day of duly 1899;
(h) every bill of exchange (payable otherwise than on demand) or
promissory note drawn or made out of British India on or after
that clay and accepted or paid, or presented for acceptance or
payment, or endorsed, transferred or otherwise negotiated, in
British Indiu; and
(c) every instrument (other than a bill of exchange, or promissory
note) mentioned in that schedule, which not having been pre-
viously executed by any person, is executed out of British India
on or after that day, relates to any property situate, or to
any matter or thing done or to he done, in British India and is
received in British India:
Provided that no duty shall he chargeable in respect of
(1) any instrument executed by. or on behalf of, or in favour of, the
Government in cases where, hut for this exemption, the (iovern-
ment would be liable to pay the duty chargeable in respect of
such instrument ;
(2) any instrument for the sale, transfer or other disposition, either
absolutely or by way of mortgage, of any ship or vessel, or any
part, interest, share or properly of or in any ship or vessel
registered under the Merchant Shipping Act, 1894, or under
Act XIX of 1838. or the Indian Registration of Ships Act, 1841,
as amended by subsequent Acts.
[For the provisions of the relevant Article 33, in which are specified the rates
of stamp duty payable in specific instances on conveyances, see. further, below.]
* * * *
D.— -Of Valuation for Duty,
Section 20. Conversion of amount exprossed in foreign ourroneles.— (1)
Where an instrument is chargeable with ad ralamn duty in respect of any money
expressed in any currency other than that of British India, such duty shall be
calculated on the value of such money in the currency of British India according
to the current rate of exchange on the day of the date of the instrument.
(2) The fSoveriior-tleneral-in-Council may, from time to time, by notifica-
tion in the “ Gazette of India,” prescribe a rate of exchange for t he conversion of
1040
THE LAW OF PATENTS IN INDIA
British or any foreign currency into the currency of British India for the purposes
of calculating stamp duty, and such rate shall be deemed to be the current rate
for the purposes of sub-section (1).
♦ * * *
[ N . B. By a Notification No. 8 dated 7th November 1931 a rate of exchange
was duly prescribed as follows : —
(a) Where the consideration in a document is expressed in sterling : —
£/ to be equivalent to Rs. 15-5-4.
(b) In cases of exchange monies other than sterling: — Rates of ex-
change to be taken at the current Bank rate .
Where an assignment of a Patent has been executed in England but is never-
theless liable to Indian stamp duty on being received in India, or ivhcrc the consi-
deration of an assignment ivhich has been executed in India is expressed in an
amount in sterling or in other non-Indian currency, the amount upon which the
stamp duty is payable may require to be calculated under the provisions of the above-
mentioned Sec. 20 and of the abovementioned Notification.]
* * * *
SCHEDULE 1.
STAMP DUTY ON INSTRUMENTS.
(See Section 3.)
Article 23. CONVEYANCE (as defined by section 2(10) not bring a
Transfer charged or exempted under No. 62.")
Where the amount or value of the consideration for such convey-
ance as set forth therein does not exceed Rs. 50 ... Eight annas.
where it exceeds Rs. 50 but does not exceed Rs. 100 ... One rupee,
where it exceeds Rs. 100 but does not exceed Rs. 200 ... Two rupees,
where it exceeds Rs. 200 but does not exceed Its. 300 ... Three rupees,
where it exceeds Rs. 300 but does not exceed Rs. 400 ... Four rupees,
where it exceeds Rs. 400 but does not exceed Rs. 500 ... Five rupees,
where it exceeds Rs. 500 but does not exceed Rs. 600 ... Six rupees,
where it exceeds Rs. 600 but does not exceed Rs. 700 ... Seven rupees,
where it exceeds Rs. 700 but does not exceed Rs. 800 ... Eight rupees,
where it exceeds Rs. 800 but does not exceed Rs. 900 ... Nine rupees,
where it exceeds R\ 900 but does not exceed Rs. 1,000 ... Ten rupees,
and for every Rs. 500 or part thereof in excess of Rs. 1,000 ... Five rupees.
[The amounts stated above for stamp duty payable for conveyances of the
various differing values stated are the amounts payable throughout British India
under the Indian Stamp Act of 1899. For Bengal and other Provinces there are
certain high rates of stamp duty imposed under certain local provincial Acts to
which reference is made below. )
The following are the relevant provisions of the Bengal Stamp Amendment
Act (Bengal Act III of 1922) by which the above-mentioned provisions of the
Indian Stamp Act are in certain respects modified for the Presidency (or Province)
of Bengal and by which the rate of stamp duty payable is in certain cases
increased for documents requiring to be stamped in the Presidency (or Province)
of Bengal : — ■'
THE BENGAL STAMP AMENDMENT ACT, 1922.
(Bengal Aot III of 1922.)
Section 4. Amendment of eeetlon 3. — In section 3 of the said Act,—
(1) after clause (c) the following shall be inserted, namely: —
“ Provided that except as otherwise expressly provided in this
APPENDIX V
1041
Act, aud notwithstanding anything contained in clauses (a), (b)
or (c) of this section or in Schedule 1, the amount indicated m
Schedule 1A to this Act shall, subject to the exemptions con-
tained in that schedule, be the duty chargeable under this Act
on the following instruments, mentioned in clauses (tier) and (bb)
of this proviso, as the proper duty therefor respectively —
(aa) Every instrument, mentioned in Schedule 1A as chargeable with
duty under that schedule, which, not having been previously
executed by any person, is executed in Bengal oil or after the first
day of April, 1922; and
(bb) Every instrument mentioned in Schedule 1A as chargeuble with
duty under that schedule which, not having been previously
executed by any person, is executed out of Bengal on or after
the first Hay of April, 1922, and relates to any property situated,
or to any matter or thing done or to he done in Bengal, and is
received in Bengal ” ;
(2) after the word " Provided ” the word “ also,” shall he inserted.
Section 8. After section 19 of the said Act* the following shall he inserted,
namely : —
“ 19A. Payment of duty on certain instruments liable to increased duty
In Bengal under clause (bb) of etetion S.— Where any instrument has become
chargeable in any part of British India other than Bengal with duty under
this Act or under any other law for the time being in force in any part of
British India and thereafter becomes chargeable with a higher rate of duty
in Bengal under clause (bb) of the first proviso to section 3 ~
(/) notwithstanding anything contained in the first proviso to section 3,
the amount of duty chargeable oil such instrument shall he the
amount chargeable on it under Schedule 1A less the amount of
duty, if any, already paid on it in British India ;
(ii) in addition to the stamps, if any, already affixed thereto, such
instrument shall he stumped with the stamps necessary for the
payment of the amount of duty chargeable on if under clause (/)
in the same manner and at the same time and by the same
persons as though such instrument were an instrument received
in British India for the first time at the time when it became
chargeable with the higher duty.”
*
* * *
Section 13. NOW Schedule 1A. — After Schedule J to the said Act the
following shall be inserted, namely : —
"SCHEDULE 1A.
Stomp duty on eortaln Instrument* under the Bengal Stamp (Amendment).
Act, 1922.
(See section 3, first proviso).
(Note . — The articles in Schedule 1A are numbered’ so as to correspond
with similar articles in Schedule 1).
131
' 1042
THE LAW OF PATENTS IN INDIA
Article 23. CONVEYANCE (as defined by section 2(10), not being a
Transfer charged or exempted under No. 62.)
Where the amount or vulue of the considera-
tion for such conveyance as set forth
therein does not exceed Ks. 50 ... Twelve annas,
where it exceeds Ks. 50 but does not exceed
Rs. 100 ... ... ... ... One rupee eight annas,
where it exceeds Rs. 100 but does not exceed
Rs. 200 ... ... ... ... Three rupees,
where it exceeds Rs. 200 but does not exceed
Rs. 3C0 ... ... ... ... Four rupees eight annas,
where it exceeds Rs. 300 but does not exceed
Rs. 400 ... ... ... ... Six rupees,
where it exceeds Rs. 400 but does not exceed
Rs. 500 ... ... ... ... Seven rupees eight annas,
where it exceeds Rs. 500 but does not exceed
Ks. 600 ... ... ... ... Nine rupees,
whore it exceeds Rs. 600 but does not exceed
Rs. 700 ... ... ... ... Ten rupees eight annas,
where it exceeds Rs. 700 but does not exceed
Rs. 800 ... ... ... ... Twelve rupees,
where it exceeds Rs. 800 but does not exceed
Rs. 900 ... ... ... ... Thirteen rupees eight annas,
where it exceeds Rs. 900 but does not exceed
Rs. 1,000 ... ... ... Fifteen rupees,
and for every Rs. 500 or part thereof in
excess of Rs. 1,000 ... ... Seven rupees eight annas
Exemption.
Assignment of copyright under the Indian
Copyright Act, 1914, section 5.’*
The recent Bengal Act of 1935, the Indian Stamp (Bengal Amendment) Act,
which in certain other respects made certain further amendments regarding the
amount of stamp duty payable in certain other cases in Bengal, does not affect
in any respect the rae of duty payable in respect of conveyances; and
consequently does not appear to affect at all the question of the stamp duty
payable on an assignment of a Patent.
For certain other Provinces also, certain higher rates of stamp duty have
from time to time been imposed by vurious local provincial Acts.
As to these:
For Assam, sec: —
Assam Act 3 of 1922 (effective for a period of three years).
Assam Act 2 of 1925 (effective for a renewed period of another three
years which expired on 3Gth April, 1928.)
For Bombay, see: —
Bombay Act 2 of 1922 (effective for a period of four years).
Bombay Act 2 of 1926.
Bombay Act 2 of 1927.
Bombay Act 1 of 1928.
Bombay Act 1 of 1929.
Bombay Act 1 of 1930.
Bombay Act 2 of 1931.
The Bombay Finance Act 2 of 1932 (Part IV).
Bombay Act 2 of 1932.
Bombay Act 6 of 1932.
Bombay Act 1 of 1933.
Bombay Act 1 of 1934.
For the Central Provinces, see: —
Central Provinces Act 2 of 1923 (effective for a period of three year*
which expired on 31st March, 1926).
* For Madras, see: —
Madras Act 6 of 1922.
Madras Act 6 of 1923 (current and in force).
APPENDIX V
1043
For the Punjab, see: —
Punjab Act 8 of 1922.
Punjab Act 1 of 1923 (current and in force).
For the United Provinces, see: —
United Provinces Act 5 of 1923 (effective for one year).
United Provinces Act 2 of 1924 (effective so as to extend the period to A
period of two years only).
United Provinces Act. 4 of 1932 (effective for two years).
United Provinces Act II of 1934 (effective for an extended period which
expired on 30th June, 1934).
See also Mulla and Pratt's Indian Stamp Act (3rd Edn., 1935) at. p. 221
and at. p. 302.
1044 THE LAW OF PATENTS IN INDIA
CALCUTTA HIGH COURT (JURISDICTION LIMITS) ACT.
ACT NO. XV OF ISIS.
(S'ee page 684 above.)
AN ACT TO DECLARE AND PRESCRIBE! THE LIMITS OF THE ORDINARY
ORIGINAL CIVIL JURISDICTION OF THE HIGH COURT OF
JUDICATURE AT FORT WILLIAM IN BENGAL.
Whereas clause 11 of the Letters Patent for the High Court of Judicature
at Fort William in Bengal dated the 28th December 1865, provides that the
said High Court shall have and exercise ordinary original civil jurisdiction
within such local limits as may from time to time be declared and prescribed by
any law made by competent legislative authority for India:
And whereas it is expedient so to declare and prescribe the local limits
of the ordinary original civil jurisdiction of the said High Court;
It is hereby enacted as follows: —
1. Limits of original oivil jurisdiction. — This Act may l>e called the
Calcutta High Court (Jurisdictional Limits) Act, 1919.
2. The ordinary original civil jurisdiction of the High Court of Judicature
at Fort William in Bengal shall be exercised within the limits set out in the
Schedule.
Provided that nothing in this Act shall affect any suit or other legal
proceeding, pending in any Court at the date of the commencement of this Act.
THE SCHEDULE.
(See Section 2.)
1. The limits within which the ordinary original civil jurisdiction of
the High Court shall he exercised are us follows: —
North. — A line commencing on the western side of the river Hooghly at a
point where the straight line joining reference pillar No. I (in a compound on
the, river side of the Ghusri Cotton Mills, Howrah) and reference pillar No. II
(near the south-western end on Chitpur Toll bridge) meets the western water-line
of the river Hooghly, and thence along the said line to the point where it meets
the eastern water-line of the liver Hooghly near the south bank of the opening
of Circular Canal; thence along the water-line of the south hank of Circular Canal
passing under the Chitpur Toll Bridge, the Chitpur or Baghbazar Bridge to
boundary pillar A on the eastern side of the southern pile of Barrackpore Bridge.
East.— A liite commencing from the said boundary pillar A following the
eastern edge of the steps of the bridge to a point near the south-eastern corner
of the immediate approach to the bridge marked by reference pillar III, which
is oil the boundary; thence by a straight line to boundary pillar B on the south-
eastern corner of the junction of Cornwallis Street and Galif Street (now marked
with a Public Works Department stone) ; thence along the eastern side and the
eastern side of the eastern pavement of Cornwallis Street in a series of regular
links joining points marked by posts 1—3 to boundary pillar C at the north
corner of the junction of S'hambazar Street with Cornwallis Street; thence by a
straight line to boundary pillar D on the solid south corner of the said junction;
thence in an approximately straight line along the solid eastern side of Upper
Circular Road marked by posts 4-— 9; thence eastward following the corner round
to boundary pillar E on the north corner of the junction of the unnamed road
(which runs into Jadu Nath Mitra Lane) with Upper Circular Road; and thence
bv a straight line to boundary pillar F at the solid south corner of the junction
ot Jadu Nath Mitra Lane with Upper Circular Road; thence by posts 10—13
to boundary pillar G on the solid south comer of the junction of Ultadingi
Road with Upper Circular Road; thence along the solid south side of Ultadingi
Road in a senes of continuous and approximately straight lines joining points
marked by posts 14—16 to boundary pillar H at the solid western comer of
the junction of Ultadingi Road and Gauribere Lane; thence by the solid western
side of Gauribere Lane marked by posts 17—21; thence by A straight line
APPENDIX V
1045
crossing the road diagonally to boundary pillar I on the solid south-eastern
comer of the junction of Gauribere Lane and Ultadingi Junction Lane; thence
along the solid eastern side of Ultadingi Junction Lane marked by posts 22—24
to boundary pillar J on the solid eastern comer of the junction of Ultadingi
Junction Lane with Halsibagan Hoad; thence by a straight line to post 25 at the
solid western corner of the said junction; thence along the solid north side of
Halsibagan Road marked by post 26 to boundary pillar K on the north side of
HalBibag&n Road directly opposite the solid eastern side of Upper Circular Road
south of it; thence by a straight line to post 27 at the solid south corner of the
junction of Halsibagan Road with Upper Circular Road ; thence by the Bolid
eastern side of Upper Circular Road marked by posts 28— -34 to post 35; thence
turning east to boundary pillar L on the north side of Maniktola Road; thence
by a straight line to post 36 at the south corner of the junction of Maniktola.
Hoad with Upper Circular Road; at the north-western corner of the garden
of Kali Puda Barik; thence along the eastern side of the line on the eastern
side of the raised platform road and marked by posts 37—49 to boundary pillar
M at the solid north corner of the junction of Gas Street and Upper Circular
Hoad; thence by a straight line to boundary pillar N' at the solid south corner
of the said junction; thence keeping again to the eastern side of the lane on
the eastern side of the raised platform road along a line marked by posts 50—61
excluding the recently-made 1 Julies’ Park to boundary pillar () near the uorth
pillar of the north entrance to North Station, Sealdah; thence by a straight line
to boundary pillar P at the south corner of that entrance; thence by the com-
paratively straight lines from pillar to pillar connecting boundary pillars P. Q. R.
S. and T. adjacent to the pillars forming the corners of the various approaches
to Sealdah Station; thence among the solid eastern side of Ijower Circular Road
marked by posts 62 — 64 to pillar 65; thence turning west to boundary pillar U
at the north-western corner of the out-patients* department of the Campbell
Hospital ; thence by a straight line marked by posts 66 — 68 to boundary pillar V
on the corner of the platform to the right, of the north entrance to the Calcutta
Corporation Central Stores; thence by post 69 turning east to post 70; thence
by posts 71 — 76, boundary pillars W and X at the solid corners of the. southern
junction of Police Hospital Road with Lower Circular Hoad ; thence by posts
77 — 80, to boundary pillars Y and Z on the solid corners of the junction of
Reniapukur Lane with Lower Circular Road, by posts 81-86 to boundary pillars
A, and B, at the solid corners of the junction of Nouapnkur or Bijli Road and
Lower Circular Road, posts 87, 88, to boundary pillar C(1), near the south-western
corner of the Circular Road burial ground; thence by u straight line to boundary
pillar 11(1) on the other side of the tramway lines; thence post. 89 eastward to post
91); thence to boundary pillars E(l) and Kfl) at the solid corners of the junction of
Karaya Bazar Road and Ixjwer Circular Road, posts 91, 92 to bounds nr pillar
(1(1) opposite to Theatre Road, posts 93, 94 to boundary Pillar H(l), a few feet
smith of the point directly opposite the junction of Auckland Place and Ijower
Circular Road, and following the curve of the road by posts 95 and .96 to reference
t iillar IV (which is on the boundary) on the eastern side of the junction of
leek Bagan Lane with Lower Circular Road.
8011th. — A line commencing from the said reference pillar (V) in a straight
line to boundary pillar 1(1) on the western corner of the junction of Beck Hagan
Lane with Lower Circular Road ; thence along the solid south side of Ijower
Circular Roud to boundary pillars J(l) and K(l) at the solid corners of the
junction of Ballyganj Circular Road and Lower Circular Road ; thence by the solid
south side of Lower Circular Road marked by posts 97, 98, boundary pillarN
L(l), M(l), at the solid corners of the junction of Lansdowne Road with
Lower Circular Road, post 99 southward to post 100, westward to post 101.
northward to post 102 and westward to post 103, boundary pillars N(l) and
0(1) at the solid corners of the junction of Woodburn Road with l^ower
Circular Road, posts 104, 105, boundary pillars P(l) and Q(l) at the solid
corners of the junction of Lee Road with Lower Circular Road ; thence by the
straight line links but broken boundary line formed by posts 106 — 113 , boundary
pillar R(l) on the south-eastern corner of the junction of Chowringhee with
Lower Circular Road ; thence by an oblique straight line to boundary pillar
8(1) on the south-western corner of the said junction (near a stone marked
F. W. B-26) ; thence by a line representing the present limits of the holdings
1046
THE LAW OF PATENTS IN INDIA
on the south Circular Road and marked by posts 114 — 116, boundary pillars
T(l) and U(l) at the solid corners of the junction of Haris Chandra Mukherji
Road and Lower Circular Road posts 117 — 121; thence to boundary pillar V(i)
near the north corner of the junction of Bhowanipore Road and Lower Circular
Road; thence following the curve of the corner and the eastern side of Bhowani-
pore Road and the surplus lands attached thereto by a series of straight line
links joining points marked by posts 122 — 124, boundary pillars W(l) and X(l)
at the junction of Shambkuuath Pandit Street and Bhowanipore Road, posts
125 — 128 turning eastward to boundary pillar Y(l) on the north side of Sankari-
para Road, posts 129, 130, to boundary pillars Z(l) and A (2) across the entrance
of Ketrapati Road into Bhowanipore Road; thence by posts 131, 132 to boundary
pillar B(2) on the north-eastern side of Alipore Bridge; thence along a straight
line joining the said boundary pillar B(2) with subsidiary reference pillar VII on
the south-eastern side of the said bridge to a point where that straight line
meets the water-line of Tolly’s Nala; thence along the water-line of Tolly’s Nala
to the north-eastern corner of the District Magistrate’s compound, near which is
boundary pillar C(2) ; thence along the irregular northern boundary of the
Magistrate’s compound marked by posts 133 — 141 to boundary pillar D(2) at the
south corner of the entrance to the Civil Surgeon’s house from Thackeray Road;
thence southward along the western boundary of the Magistrate’s compound by
posts 142 — 145 and along the southern boundary of that compound marked by
posts 147, 148 to boundary pillar E(2) on the bank of Tolly’s Nala; thence
continuing the straight line from post 148 to boundary pillar E(2) till it meets
the water-line of Tolly’s Nala; thence along the water-line of Tolly’s Nala to
a point in a direct line with the north side of the masonry drain running outside
the Jail Garden near which is boundary pillar F(2) ; thence along the north side
of the said drain in a straight line across Motee Jheel to post 149 against
the boundary of the compound of the Magistrate’s Court; thence northward along
that boundary to post 150 and westward to post 151 and northward again along
the boundary of the Army Clothing Agency to post 152; thence westward on the
south side of the lane to boundary pillar G(2) at the north-western corner of the
Police Hospital compound; thence along the wall of the Alipore Central Jail
facing Belvedere Road and marked by pillars 153 — 157 to the north-western
corner of the junction of Belvedere Road and Jail Lane following the corner
eastward to post 158 and continuing along the south side of Jail Lane to post
159; thence by a straight line to boundary pillar If (2) at the acute corner of the
junction of Reformatory Street with Jail Lane; thence to boundary pillar 1(2) on
the north-western side of Alipore Bridge; thence to boundary pillar J(2) on the
north-eastern side of the said Bridge; thence by the solid south-western and
western side of Bhowanipore Road marked by posts 160 — 167; thence following
the western corner of the junction of Bhowanipore Road and Lower Circular
Road to boundary pillar K(2) thence along the solid south side of Lower Circular
Road following the sweep of the railings and marked by posts 16&— 172 to
boundary pillar L(2) on the Lower Circular Road and east of its junction with
Belvedere Road ; thence following the natural bends of the corner marked by
posts 173 and 174 to boundary pillar M(2) on the eastern side of Belvedere
Road; thence along the eastern side of Belvedere Road now indicated by
wooden railings and marked by posts 175 to boundary pillar N(2) on
the north-eastern side of Zeerut Bridge; thence along the railings of tile
footpath on the eastern side of the bridge to boundary pillar 0(2) near its
south-eastern end; thence along a bent line following the shape of the
bridge and marked by posts 176, 177 to post 178 on the eastern side of the
south extremity of the immediate approach to the bridge; thence by a straight
line to boundary pillar F(2) on the western side of the said extremity; thence
turning north along the railings of the footpath on the western side of the
bridge till it meets the water-line underneath the bridge; thence along the
water-line of the south or Alipore Bank of Tolly’s Nala trending northwards
under Hastings Bridge to a point where a straight line joining reference pillar V
(near the south-western end of Hastings Bridge), to reference pillar VI (on the
Howrah side of the river in a line with the northern wall of the Bengal-Nagpur
Railway Goods Yard) meets the water-line of the south bank of the bend of
the Hooghly River, near the western side of the opening of Tolly's Nala; thence
continuing the said straight line till that said straight line meets the water-line
of the Howrah side of the river Hooghly.
APPENDIX V
1047
WMt. — A lino commencing from the point Inst defined along the water-line
of the Howrah side of the river Honghly to the western extremity of the
northern boundary.
2. (a) When the expression “ water-line ” is used in this schedule all
pucca ghats and other objects permanently attached to the bank and in. contact
'with the water shall be deemed to appertain to the area to which the land on
that bank appertains, and the water in contact with such objects shall be
deemed to appertain to the other side of the boundary. In the places in the
schedule where the boundary is thus described the boundary line shall be the
moving edge of the water wherever it may be at any time. In the case of
bridges, however, the supporting pile in contact with the bank only shall be
deemed to be permanently attached to the bank and the boundary line across
the bridge to be immediately above the water-line so described.
(6) The expression 41 solid side *’ or “ solid corner " means the line or
spot murked out by solid objects, such as a pucca wall or the face of a house,
the wayside lands and pavements thus being all included in the adjacent road,
street or lane.
H. M. SMITH,
Offg. Secretary to the Government of India.
1048
THE LAW OF PATENTS IN INDIA
MIADRA,* ACT NO. IV OF 1927.
Tht Madras High Court (Jurladlatlonal Limit*) Act.
Whereas clause 11 of the Letters Patent for the High Court of Judicature
at Madras, dated the 28th December, 1865, provides that the said High Court
shall have and exercise ordinary original civil jurisdiction within such local
limits as may from time to time be declared and prescribed by any law made by
the Governor-in-Council.
And Whereas it is expedient so to declare and prescribe the local limits
of the ordinary original civil jurisdiction of the said High Court;
And Whereas the previous sanction of His Excellency the Governor-General
has been obtained; it is hereby enacted as follows: —
1. Short Title. — This Act may be called the Madras High Court
(Jurisdictional Limits) Act, 1907.
2. Limits of ordinary original oivil jurisdiction of Madras High Court.—
The ordinary original civil jurisdiction of the High Court of Judicature at
Madras shall be exercised within the limits set out in the schedule.
Provided that nothing in this Act shall affect any suit or other legal
proceeding pending in any Court at the date of the commencement of this Act.
THE SCHEDULE.
The limits within which the ordinary original c\vil jurisdiction of the
High Court shall be exercised are as follows: —
North. — Commencing from the point where the houudary line between
Tiruvottiyur village and Tondiarpet village meets the sea, along the boundary
line between Tondiarpet village and Tiruvottiyur and Sattankadu villages to the
point where Sattankadu, Kodumgiyur and Tondiarpet villages meet; thence in
a south-westerly direction along the boundary line between Kodumgiyur and
Tondiarpet so as to include the whole of Tondiarpet village; thence in a westerly
direction along the boundary line between the villuges of Perainbur and
Erukkanjeri to the point where Perambur, Erukkanjeri and Sembiyam villages
meet.
W6tt. — From the said point in a southerly direction along the western
boundary of Perambur village and the eastern boundary of Sembiyam, Siruvallur
and Sinna Sembarampukkam villages to the south-west corner of Perambur
village and thence in an easterly direction along the southern boundary of
Perambur village to the point where the villages of Perambur, Purasawakam and
Ayanapuram shrotriyam meet so as to include the whole of Perambur village;
thence along the boundary line between Purasawakam and Ayanapuram shrotriyam
so as to include the whole of Purasawakam village; thence along the boundary
line between Egmore village and the villages of Ayanapuram shrotriyam,
Amanjikarai shrotriyam and Agaramvada so as to include the whole of Egmore
village; thence along the boundary line between Nungambakam village and
Puliyur shrotriyam to the point where the South Indian Railway line enters
Nungambakam; thgnce along the eastern side of the South Indian Railway
boundary to the point where it intersacts the boundary between Survey No. 170-1
and 2; thence eastwards in a straight line through Survey Nos. 170, 171, 172 and
173 to the junction of Survey Nos. 165, 172 and 173 and continued to meet
the south-eastern boundary of Survey No. 173; thence north-westwards along
the boundary between Survey No. 173 and Government Farm Survey No. 4 to
its intersection with Survey No. 25; thence northwards fifty feet along the
calingula and thence eastwards to a point in Survey No. 20 (2) of Mambalam
zamindari situated 415 feet from the furlong stone 4-5 on Mount Road on the
continuation of the straight line joining the survey stone next the northernmost
stone on the north-western side of Survey No. 1 of 179 Government Farm and
furlong stone 4-5 on Mount Road; and thence from the said point in Survey
No. 20 (2) south-eastward 500 feet along the above line to the survey stone
(above mentioned) and eastward along the northern boundary of Survey No. 1
of 179 Government Farm to the Municipal boundary stone No. 242; thence
southward along the western boundary of Survey No. 3885 (channel) to the
Municipal boundary stone No. 244; thence in a south-westerly direction to the
Municipal boundary stone No. 246; thence across the river Adyar to the Municipal
boundary stone No. 247,
South. — From the said point along the southern bank of the river Adyar
to the sea.
East. — The sea.
THE INDIAN PATENTS AND DESIGNS ACT OP 1911.
(ACT 2 OF 1911.)
[K B. The Act is here set out in its current from after giving
effect to the various amendments which have been made
up to 31st October 1930 by the amending Acto.]
CONTENTS
PRELIMINARY
Sections.
1. Short title, extent and commencement.
2. Definitions.
PART I
PATENTS
Application (or and Grant of Patent.
3. Application.
4. Specification.
5. Proceedings upon application.
6. Advertisement on acceptance of application.
7. Use of invention on acceptance of application
8. Repealed.
9. Opposition to grant of patent.
10. Grant and scaling of patent.
11. Date of patent.
12. Effect, extent and form of patent.
18. Fraudulent applications for patents.
Term of Patent.
14. Term of patent.
15. Extension of term of patent.
15A. Patents of addition.
16. Restoration of lapsed patent.
132
1060
THE LAW OF PATENTS IN INDIA
Sections.
Amendment of Application or Specification.
17. Amendment of application or specification by Controller.
18. Amendment of specification by the Court.
19. Restriction on recovery of damages.
Register of Patents.
20. Register of Patents.
Crown.
21. Patent to bind Crown.
21A. Assignment of patent to tho Secretary of State for India
in Council.
Compulsory Licenses and Revocation.
22. Compulsory licenses and revocation.
28. Revocation of patents worked outside British India.
23A. Operation of order under section 22 or section 23.
24. Power of Controller to revoke surrendered i>atcnt.
25. Revocation of patent on public grounds.
Legal Proceedings.
26. Petition for revocation of patent.
27. Notice of proceedings to persons interested.
28. Framing issue for trial before other Courts.
29. Suits for infringement of patents.
30. Exemption of innocent infringer from liability for damages.
31. Order for inspection, etc., in suit.
32. Certificate of validity questioned and costs thereon.
33. Transmission of decrees and orders to the Controller.
34. Power of High Court to stay proceedings, etc.
35. Hearing with assessor.
35A. Grant of relief in respect of particular claims.
36. Remedy in case of groundless threats of legal proceedings.
Miscellaneous.
37. Grant of patents to two or more persons.
38. Novelty of Invention.
39. Loss or destruction of patent.
APPENDIX V 1051
Sections.
40. Provisions as to exhibitions.
41. Models to be furnished to Indian Museum.
42. Foreign vessels in British Indian -waters.
PART II
DESIGNS
Registration of Designs.
48. Application for registration of designs.
44. Registration of designs in new classes.
45. Certificate of registration.
46. Register of Designs.
Copyright in Registered Designs.
47. Copyright on registration.
48. Requirements before delivery on sa lc.
49. Effect of disclosure on copyright.
50. Inspection of registered designs.
51. Information as to existence of copyright.
51 A. Cancellation of registration.
51B. Registration of designs to bind the Crown.
Industrial and International Exhibitions.
52. Provisions as to exhibitions.
Legal Proceedings.
53. Piracy of registered design.
54. Application of certain provisions of the Act as to Patents
and Designs.
1062
THE LAW OF PATENTS IN INDIA
PART Itl
GENERAL
Patent Office and Proceedings thereat.
Sections.
55. Patent Offioe.
56. Officers and olerks.
Fees.
57. Fees.
Provisions as to Registers and other Documents in the
Patent Office.
58. Notice of trust not to be entered in registers.
59. Inspection of and extracts from rogisters.
60. Privilege of reports of Controller.
61. Prohibition of publication of specification, drawings, etc.,
where application abandoned, etc.
62. Power for Controller to correct clerical errors.
63. Entry of assignments and transmissions in registers.
64. Rectification of register by Court.
Powers and Duties of Controller.
65. Powers of Controller in proceedings under Act.
66. Publication of patented inventions.
67. Exercise of discretionary power by Controller.
68. Power of Controller to take directions of Governor General
in Council.
69. Refusal to grant patent, etc., in certain cases.
70. Appeals to the Governor General in Council.
Evidence, etc.
71. Certificate of Controller to be evidence.
72. Transmission of certified printed copies of specifications,
etc.
73. Applications and notices by post.
74. Declaration by infant, lunatic, etc.
74A. Security for costs.
APPENDIX V
1063
Agency.
75. Subscription and verification of certain documents.
76. Agency.
Powers, etc., of Governor General in Council.
77. Power for Governor General in Council to make rules.
Offences.
78. Wrongful use of words “Patent Office.”
Reciprocal arrangements with the United Kingdom and other parts
of His Majesty’s dominions.
78A. Reciprocal arrangements with the United Kingdom and
other parts of His Majesty’s dominions.
Savings and Repeal.
79. Saving for prerogative.
80. Repealed .
81 . Repealed.
The Schedule.— F ees.
ACT NO. II OF 1911
[The 2nd March, 1911 . ]
An Act to amend the law relating to the protection of
Inventions and Designs.
Whereas it is expedient to amend the law relating to the pro-
tection of inventions and designs ; It is hereby enacted as follows :
PRELIMINARY
1. Short title, extent and commencement.— (1) This Act may
be called the Indian Patents and Designs Act, 1911.
(2) It extends to the whole of British India, including British
Baluchistan and the Santhal Parganas ; and
[As to the form of the grant of Indian Letters Potent see page
31. As to the territory over which the Patent is effective, see
1064
THE LAW OP PATENTS IN INDIA
page 33. Compare Seo. 99 of the corresponding English Statute
being the English Patents and Designs Acts, 1907 to 1932.]
(3) It shall come into force on the first day of January, 1912.
2. Definitions. — In this Act, unless there is anything repug-
nant in the subject or oontezt, —
(1) “Advocate General” inoludes a Government Advocate :
[For proceedings on an application to obtain the fiat of the
Advocate General under Section 26(2Xa) see page 441 and Chapter
XI generally.]
(2) “article” means (as respects designs) any article of manu-
facture and any substance, artificial or natural, or partly artificial
and partly natural :
(3) “Controller” means the Controller of Patents and Designs
appointed under this Act :
(4) “copyright” means the exclusive right to apply a design
to any article in any class in which the design is registered :
(5) “design” means only the features of shape, configuration,
pattern, or ornament applied to any article by any industrial process
or means, whether manual, machanical or chemical, separate or com-
bined, which in the finished article appeal to and are judged solely
by the eye ; but does not include any mode or principle of construc-
tion or anything which is in substance a mere mechanical device,
and does not include any trade mark as defined in Section 478, or
property mark as defined in Section 479 of the Indian Penal
Code :
(6) “District Court” has the meaning assigned to that expres-
sion by the Code of Civil Procedure, 1908 :
[See Chapter VII Part II. As to the various District Courts
in British India see page 690. As to the transfer of an infringement
suit from a District Court proper to a High Court see page 671.]
(7) “High Court” has the meaning assigned to that expression
by the Code of Criminal Procedure, 1898, in reference to the proceed-
ings against European British subjects :
(8) “invention” means any manner of new manufacture and
includes an improvement and an alleged invention :
[Regarding want of subject matter see Chapter VI Part II : as
to inventive step see from page 144. Regarding want of novelty
see Chapter VI Part III.]
APPENDIX V
1066
(9) “legal representative” means a person who in law repre-
sents the estate of a deceased person :
[Regarding application for a Patent by a legal representative of
the true and first inventor, see page 838.]
(10) “manufacture” includes any art, process or manner of
produoing, preparing or making an article, and also any article
prepared or produced by manufacture :
[As to the meaning of the words “manner of manufacture”,
see Chapter VI Part II : and from page 122.]
(11) “patent” means a patent granted under the provisions of
this Act :
(12) “patentee” means the person for the time being entered
on the register of patents kept under this Act as the grantee or
proprietor of the patent :
[See also Section 29(1) and Section 20. As to the effect of
registration, see Section 63. A nd see pages 582 and 588.]
(13) “prescribed” includes prescribed by rules under this
Act : and
(14) “proprietor of a new or original design,” —
( a ) where the author of the design, for good consideration,
executes the work for some other person, means the
person for whom the design is so executed ; and
( b ) where any person acquires the design or the right to
apply the design to any article, either exclusively of any
other person or otherwise, means, in the respect and to
the extent in and to which the design or right has been
so acquired, the person by whom the design or right is
so acquired ; and
(c) in any other case, means the author of the design ;
and where the property in, or the right to apply, the design has
devolved from the original proprietor upon any other person,
includes that other person.
[Compare Seos. 92 and 93 for the definitions in the English
Act.]
1056
THE LAW OF PATENTS IN INDIA
PART I
PATENTS
Application for and Grant of Patent.
3. Application. — (1) An application for a patent may be
made by any person whether he is a British subject or not, and
whether alone or jointly with any other person.
(2) The application must be made iu the prescribed from, and
must be left at the Patent Office in the prescribed manner.
(3) The application must contain a declaration to the effect
that the applicant is in possession of an invention, whereof he, or in
the case of a joint application one at least of the applicants, claims
to bo the true and first inventor or the legal representative or assign
of such inventor and for which he desires to obtain a patent, and
must be accompanied by a specification and by the prescribed fee.
(4) Where the true and first inventor is not a party to the
application, the application must contain a statement of his name,
and such particulars for his identification as may be prescribed, and
the applicant must show that he is the legal representative or assign
of such inventor.
[Regarding the procedure for application for a Patent and the
various modes of application see Chapter IX. Compare Sec. 1 of
the English Act.]
4. Specification. — (1) The specification must particularly
describe and ascertain the nature of the invention and the manner in
which the same is to be performed.
(2) Where the Controller deems it desirable, he may require
that suitable drawings shall be supplied with the specification, or at
any time before the acceptance of the application, and such draw-
ings shall be deemed to form part of the specification.
(3) The specification must commence with the title, and muBt
end with a distinct statement of the invention claimed.
(4) If in any particular case the Controller considers that an
application should be further supplemented by a model or sample
of anything illustrating the invention or alleged to constitute an
invention, suoh model or sample as he may require shall be furnished
APPENDIX V
1057
before the acoeptanoe of the application, but such model or sample
shall not be deemed to form part of the specification.
[Compare Sec. 2 of the English Patents and Designs Acts 1907
to 1932.]
5. Proceedings upon application. — (1) The Controller shall
examine every application, and if he considers that —
(а) the nature of the invention is not fairly described, or
(б) the application, specification and drawings have not
been prepared in the prescribed manner, or
(e) the title does not sufficiently indicate the subject-matter
of the invention, or
(d) the statement of claim does not sufficiently define the
invention, or
(e) the invention as described and claimed is prima fad#
not a new manufacture or improvement, or
(f) the specification relates to more than one invention,
he may refuse to accept the application or require that the appli-
cation, specification or drawings be amended before he proceeds with
the application ; and in the latter case the application shall, if the
Controller so directs, bear date as from the time when the require-
ment is complied with :
Provided that, when a specification comprises more than one
invention, the application shall, if the Controller or the applicant so
requires, be restricted to one invention and the other inventions may
be made the subject-matter of fresh applications; and any such fresh
application shall be proceeded with as a substantivo application,
but the Controller may, in his discretion, direct that any
such fresh application made before the acceptance of the original
application shall bear the date of the original application or such
later date as he may fix, and the fresh application shall be deemed,
for the purposes of this Act, to have been made on the date which it
bears in accordance with such direction.
(2) Where the Controller refusos to accept an application or
requires an amendment, the applicant may appeal from his decision
to the Governor General in Council.
(3) The investigations required by this section shall not be
held in any way to guarantee the validity of any patent, and no liabi-
lity shall be incurred by the Governor General in Counoil or any
133
1058
THE LAW OF PATENTS IN INDIA
officer by reaeon of, or in connection with, any such investigation, or
any proceeding consequent thereon.
(4) Unless an application is accepted within twelve months
from the date of the application, the application shall (except where
an appeal has been lodged) become void.
Provided that where, before, or within three months after, the
expiration of the said period of twelve months, a request is made to
the Controller for an extension of time by any period not exceeding
three months, the application shall, on payment of the prescribed
fee, be continued or revived, as the case may be, during, but not
beyond, the period of extension so requested.
[Regarding the nature of the examination at this stage and the
objections to the application which may be taken by the Patent
Office, see Chapter IX from page 366. Compare Sec. 3 of the English
Act.]
6. Advertisement on acceptance of application. — On the
acceptance of an application the Controller shall give notice thereof
to the applicant and shall advertise the acceptance ; and the applica-
tion and specification with the drawings (if any) shall be open to
public inspection,
[Compare Sec. 9 of the English Act.]
7. Use of invention on acceptance of application. — Where an
application for a patent in respect of an invention has been accepted,
any use or publication of the invention during the period between
the date of application and the date of sealing such patent shall not
prejudice the phtent to be granted for the invention :
Provided that an applicant shall not be entitled to institute
any proceedings for infringement unless and until a patent for the
invention has been granted to him.
[Regarding the effect of proviso, sec pages 548-550. Compare
Sec. 10 of the English Act.]
8. ...(Repealed).
9. Opposition to grant of patent.— (1) Any person may, on
payment of prescribed fee, at any time' within four months from the
date of the advertisement of the acceptance of an application, give
notice at the Patent Office of opposition to the grant of the patent
on any of the following grounds, namely —
, (o) that the applicant obtained the invention from him, or
APPENDIX V
1000
from a person of whom he ie the legal representative or
assign ; or
(/>) that the invention has been claimed in any specification
filed in British India which is or will be of prior date
to the patent, the grant of which is opposed ; or
(*?) that the nature of the invention or the manner in which
it is to be performed is not sufficiently or fairly des-
cribed and ascertained in the specification ; or
W) that the invention has been publicly used in any part
of British India or has been made publicly known in
any part of British India ;
but on no other ground.
(2) Where such notice is given, the Controller shall give notice
of the opposition to the applicant, and shall, on the expiration of
those (four) months, after hearing the applicant and the opponent, if
desirous of being heard, decide on the case.
(3) The decision of the Controller shall be subject to appeal
to the Governor General in Council.
[For the practice and procedure on opposition proceedings see
Chapter X. Regarding the grounds of opposition for invalidity see
page 410. Compare Sec. 11 of the English Act.]
10. Grant and sealing of patent. — (l) If there is no opposi-
tion, or, in case of opposition, if the determination is in favour of the
grant of a patent, a patent shall, on payment of the prescribed fee,
be granted subject to such conditions (if any) as the Governor
General in Council thinks expedient, to the applicant, or in the case
of a joint application to the applicants jointly, and the Controller
shall cause the patent to be scaled with the seal of the Patent
Office.
(1A) Notwithstanding anything contained in sub-section (1),
where —
(«) an applicant has agreed in writing that on the grant to
him of a patent he will assign it to another party or to
a joint applicant and refuses to proceed with the appli-
cation, or
(b) disputes arise between joint applicants as to proceeding
with an application,
1000
THE LAW OF PATENTS IN INDIA
the controller, if he is satisfied of the existence of snoh agreement or,
in any other case, that any joint applicant or applicants ought to be
allowed to proceed alone, may direct that snch other party or joint
applicant or applicants may proceed with the application accord-
dingly and may grant a patent to him or them, as the case may be :
Provided that —
(*') the Controller shall not give any such direction until
every party interested has had an opportunity of being
heard by him, and
(ii) an appeal from any such direction shall lie to the
Governor General in Council.
(2) A patent shall be sealed as soon as may be, and not after
the expiration of eighteen months from the date of application :
Provided that, —
(a) where the Controller has allowed an extension of the
time within which an application may be accepted, a
further extension of four months after the said eighteen
months shall be allowed for the sealing of the patent ;
( b ) where the sealing is delayed by an appeal to the Gover-
nor General in Council or by opposition to the grant of
the patent, the patent may be sealed at such time as the
Controller may direct ;
(e) where the patent is granted to the legal representative
of an applicant who has died before the expiration of
th<Hime which would otherwise be allowed for sealing
the patent, the patent may be sealed at any time within
twelve months after the date of his death ;
(d) where for any reason a patent cannot be sealed within
the period allowed by any of the foregoing provisions of
this section, that period may, on payment of the pres-
cribed feo and on compliance with the prescribed
conditions, be extended to the extent applied for but
not exceeding three months.
[Compare Sec. 12 of the English Act.]
11. Date of patent. — Except as otherwise expressly provided
by this Act, a patent shall be dated and sealed as of the date of the
application :
APPENDIX V
1001
Provided that no proceedings shall be taken in respect of an
infringement committed before the advertisement of the aoceptanoe
of the application.
[Regarding the effect of the proviso see pages 548 to 550.
Compare Sec. 13 of the English Act.]
12. Effect, extent and form of patent. — (1) A patent sealed
with the seal of the Patent Office shall, subject to the other provi-
sions of this Act, confer on the patentee the exclusive privilege of
making, selling and using the invention throughout British India and
of authorizing others so to do.
(2) Every patent may be in the prescribed form and shall be
granted for one invention only, but the specification may contain
more than one claim ; and it shall not be competent for any person
in a suit or other proceeding to take any objection to a patent on
the ground that it has been granted for more than one invention.
[Regarding the question what constitutes infringement in rela-
tion to the grant see Chapter XIV to page 542 (particularly No. 14)
and Chapter XV from page 553. Compare Sec. 14 of the English
Act.]
13. Fraudulent applications for patents.—! 1 ) A patent granted
to the true and first inventor or his legal representative or assign
shall not be invalidated by an application in fraud of him, or by
protection obtained thereon or by any use or publication of the
invention subsequent to that fraudulent application during the
period of protection.
(2) Where a patent has been revoked by the High Court on
the ground that it has been obtained in fraud of the true and first
inventor, or where the grant of a patent has been refused by the
Controller under section 9 on the ground stated in clause (a) of sub-
section (1) of that section, the Controller may, on the application of
the true inventor or his legal representative or assign made in accor-
dance with the provisions of this Act, grant to him a patent for the
whole or any part of the invention, and the patent po granted shall
bear the same date as the patent so revoked or, in the case of a
patent the grant of which has been refused, the same date as would
have been borne by the patent if it had been granted :
Provided that no suit shall be brought for any infringement of
THE LAW OF PATENTS IN INDIA
1068
the patent so granted committed before the actual date when such
patent was granted.
[Regarding the groundof “obtaining”, see Chapter VII part III
and pages 263 to 267 ; also page 412. The power to make the subs-
tituted grant referred to in this section is of great value to an
opponent to the grant. Compare Sec. 15 of the English Act.]
Term of Patent.
14. Term of Patent. — (1) The term limited in every patent
for the duration thereof shall, save as otherwise expressly provided
by this Act, be sixteen years from its date.
(IA) Any patent the original term of which had not expired
on or before the 1st day of July, 1930, shall have effect as if the
term mentioned therein was sixteen years instead of fourteen years,
and any license existing at that date which has been granted for
the term of the patent shall be treated as having been granted for
the term as so extended if the licensee so desires.
(IB) Where any party to a contract with the patentee or any
other person entered into before the 1st day of January, 1930, is
subjected to loss or liability by reason of the extension of the term
of any patent under this section, any District Court having juris-
diction may determine in what manner and by which parties such
loss or liability shall be borne.
(2) A patent shall, notwithstanding anything therein or in
this Act, cease if the patentee fails to pay the prescribed fees within
the prescribed times :
Provided that where the patentee, before, or within three
months after, the expiration of the time for payment, applies to
the Controller for an extension of time by any period not exceed-
ing three months, the patent shall, on payment of such additional
fee as may be prescribed, be continued or revived, as the case may
be, during, but not beyond, the period of extension applied for.
(3) If any proceeding is taken in respect of an infringement of
the patent committed after a failure to pay any fee within the
prescribed time, , and before any enlargement thereof, the Court
before which the proceeding is taken may, if it thinks fit, refuse
to award any damages in respect of such infringement.
[Regarding' the term of a Patent see page 31. As to extension
APPENDIX V
108 *
see Chapter XIII. Regarding renewal fees see Chapter II and
page 41 and, as to a defence to an infringement suit see Chapter
XIV page 540 (No. 4), Compare Sec. 17 of the English Act.]
15. Extension of term of Patent.— (1) A patentee may, present
a petition to the Governor General in Council praying that his
patent may be extended for a further term ; but such petition must
be left at the Patent Office at least six months before the time limi-
ted for the expiration of the patent and must be accompanied by
the prescribed fee and must be advertised by the patentee within
the prescribed time and in the prescribed manner.
(2) Any person may within such time as may be proscribed
and on payment of the prescribed fee give notice to the Controller
of objection to the extension.
(8) Where a petition is presented under sub-section (1), the
Governor General in Council may, as lie thinks fit, dispose of the
petition himself or refer it to a High Court for decision.
(4) If the petition be referred to a High Court, then on the
hearing of such petition under this section the patentee, and any
person who has given notice nndcr sub-section (2) of objection,
shall be made parties to the proceeding, and the Controller shall
be entitled to appear and be heard.
(5) The Court to which the petition is referred shall, in con-
sidering its decision, have regard to the nature and merits of the
invention in relation to the public, to the profits made by the
patentee as such, and to all the circumstances of the case.
(6) If it appears to the Governor General in Council, or to
the High Court when the petition has been referred to it, that the
patentee has been adequately remunerated by his patent, the
Governor General in Council or the High Court, as the case may
be, may by order extend the term of the patent for a further term
not exceeding five or, in exceptional cases, ten years, or may order
the grant of a new patent for such term as may be specified in the
order and subject to the payment of such fees as may be prescribed
and containing any restriction, conditions and provisions which the
Governor General in Council or the High Court, as the case may be,
may think fit :
Provided that any patent so extended or granted shall, not-
THE LAW OF PATENTS IN INDIA
withstanding anything therein, or in this Act, cease if the inventor
fails to pay before the expiration of eaoh year the prescribed fee.
[Regarding extension see Chapter XIII, Part I. Compare sec.
18 of the English Act.]
15 A. Patents of addition. — (1) Where a patent for an inven-
tion has been applied for or granted, and the applicant or the paten-
tee, as the case may be, applies for a further patent in respect of any
improvement in or modification of the invention, he may in his
application for the further patent request that the term limited in
that patent for the duration thereof be the same as that of the ori-
ginal patent or so much of that term as is unexpired, and, if he does
so, a patent (hereinafter referred to as a patent of addition) may be
granted for such term as aforesaid.
(2) Save as otherwise expressly provided by this Act, a patent
of addition shall remain in force as long as the patent for the
original invention remains in force, but no longer, and in respect
of a patent of addition no fees shall be payable for renewal :
Provided that if the patent for the original invention is revoked,
then the patent of addition shall, if the authority by which it is
revoked eo orders, become an independent patent, and the fees
payable, and the dates when they become payable, shall be deter-
mined by its date, but its duration shall not exceed the unexpired
term of the patent for the original invention.
(3) The grant of a patent of addition shall be conclusive evi-
dence that the invention is a proper subject for a patent of addition,
and the validity of the patent shall not be questioned on the ground
that the invention ought to have been the subject of an independent
patent.
[Regarding application for a Patent of Addition see page 365.
Compare Sec. 19 of the English Act.]
16. Restoration of lapsed patent. — (1) Where any patent has
ceased owing to the failure of the patentee to pay any prescribed
fee within the prescribed time, the patentee may apply to the Con-
troller in- the prescribed manner for an order for the restoration of
the patent.
(2) Every such application shall contain a statement of the
circumstances which have led to the omission of the payment of
the prescribed fee.
APPENDIX V
*'iim
(3) If it appears from such statement that the omission was
unintentional or unavoidable and that no undue delay has occurred
in the making of the application, the Controller shall advertise
the application in the prescribed manner, and within such time as
may be prescribed any person may give notice of opposition at the
Patent Office.
(4) Where such notice is given the Controller shall notify the
applicant thereof.
(5) After the expiration of the prescribed period the Controller
shall hear the case and, subject to an appeal to the Governor
General in Council, issue an order either restoring the patent
subject to any conditions and restrictions deemed to be advisable
or dismissing the application :
Provided that in every order under this section restoring a
patent such provisions as may be prescribed shall be inserted for
the protection of persons who may have availed themselves of the
subject-matter of the patent after the patent had ceased.
[Regarding restoration of a lapsed Patent see Chapter XIII,
Part II. Compare Sec. 20 of the English Act.]
Amendment of Application or Specification.
17. Amendment of application or specification by Controller.
— (1) An applicant or a patentee may at any time, by request in
writing left at the Patent Office and accompanied by the prescribed
fee, seek leave to amend his application or specification, including
drawings forming part thereof, by way of disclaimer, correction or
explanation, stating the nature of, and the reasons for, the proposed
amendment.
(2) If the application for a patent has not been accepted, the
Controller shall determine whether and subject to what conditions
(if any) the amendment shall be allowed.
(3) In any other case the request and the nature of the pro-
posed amendment shall be advertised in the prescribed manner, and
at any time within three months from its first advertisement any
person may give notice at the Patent Office of opposition to the
amendment.
(4) Where such a notice is given the Controller shall give
134
1060
THE LAW OF PATENTS IN INDIA
notice of the opposition to the person making the request, and shall
hear and decide the case.
(5) Where no notice of opposition is given, or the person so
giving notice of opposition does not appear, the Controller shall
determine whether and subject to what conditions, if any, the
amendment ought to be allowed.
(6) The decision of the Controller in either case shall be
subject to an appeal to the Governor General in Council.
(7) No amendment shall be allowed that would make the
application or specification, as amended, claim an invention substan-
tially larger than, or substantially different from, the invention
claimed by the application or specification as it stood before amend-
ment.
(8) Leave to amend shall be conclusive as to the right of the
party to make the amendment allowed, except in case of fraud ;
and the amendment shall be advertised in the prescribed manner,
and shall in all Courts and for all purposes be deemed to form part
of the application or specification.
(9) This section shall not apply when and so long as any suit
for infringement or proceeding before a Court for the revocation of
the patent is pending.
[Regarding amendment of an application for Patent or of a
Specification, see Chapter XII. Compare Sec. 21 of the English Act.J
18. Amendment of specification by the Court. — In any suit
for infringement of a patent or proceeding before a Court for the
revocation of a patent the Court may by order allow the patentee
to amend his specification by way of disclaimer, correction or expla-
nation in such manner, and subject to such terms as to costs,
advertisement or otherwise, as the Court may think fit :
Provided that no amendment shall be so allowed that would
make the specification, as amended, claim an invention substan-
tially larger than, or substantially different from, the invention
claimed by the specification as it stood before the amendment, and
where an application for such an order is made to the Court notice
bf the application shall be given to the Controller, and the Con-
troller shall have the right to appear and be heard.
[Regarding an application to the Court for an order allowing
APPENDIX V
• 1067
an amendment of a specification see Chapter XII Parts I & III.
Compare Sec 22 of the English Act.]
19. Restriction on recovery of damages. — Where an amend-
: ment of a specification by way of disclaimer, correction or explana-
tion has been allowed under this Act, no damages shall be given in
any suit in respect of the use of the invention before the date of the
decision allowing the amendment unless the patentee establishes to
the satisfaction of the Court that his original claim was framed in
good faith and with reasonable skill and knowledge.
[As to a defence to a suit for infringement based on this
section see Chapter XIV (No. 43). Compare Sec. 23 of the English
Act.]
Register of Patents.
20. (1) Register of Patents. — There shall be kept at the Pateut
Office a book called the Register of Patents, wherein shall be entered
the names and addresses of grantees of patents, notifications of
assignments and of transmissions of patents, of licenses under
patents, and of amendments, extensions, and revocations of patents,
and such other matters affecting the validity or proprietorship of
patents as may be prescribed.
(2) The register of inventions and address book existing at
the commencement of this Act shall be incorporated with, and form
part of, the register of patents under this Act.
(3) The register of patents shall bo pritua facie evidence of
any matters by this Act directed or authorised to be inserted
therein.
(4) Copies of deeds, licenses and any other documents affect- ■*
ing the proprietorship in any patent or in any license thereunder,
must be supplied to the Controller in the prescribed manner for
filing*in the Patent Office.
[As to the effect of registration see Section 63. Also see pages
582 and 588. Compare Section 2(12), also Section 29 (1). Compare
Sec. 28 of the English Act.]
Crown.
21. Patent to bind Crown. — (1) Subject to the other provisions
of this section, a patent shall have to all intents the like effect as
against His Majesty the King as it has against a subject.
1068
THE LAW OF PATENTS IN INDIA
(2) The officers or authorities administering any department
of the service of His Majesty may, by themselves or by such of their
.agents, contractors or others as may be authorised in writing by
them, at any time after the application, and after giving notice
to the applicant or patentee, make, use or exercise the invention
for the service of the Crown on such terms as may, either before
or after the use thereof, be agreed on, with the approval of the
Governor General in Council, between such officers or authorities
and the applicant or patentee, or, in default of agreement, as may
be settled in the manner hereinafter provided. And the terms of
any agreement or license concluded between the applicant or
patentee and any . person other than such officers or authorities,
shall be inoperative so far as concerns the making, use or exercise
of the invention for the service of the Crown.
(3) Where an invention which is the subject of any patent has,
before the date of the patent, been duly recorded in a document
by, or tried by or on behalf of, the officers or authorities adminis-
tering any department of the service of His Majesty (such invention
not having been communicated directly or indirectly by the appli-
cant or patentee), such officers or authorities, or such of their
agents, contractors, or others, as may be authorised in writing by
them, may, after giving notice to the applicant or patentee, make,
use or exercise the invention so recorded or tried for the service
of the Crown, free of any royalty or other payment to the applicant
or patentee, notwithstanding the existence of the patent. If, in
the opinion of such officers or authorities, the disclosure to the
applicant or patentee, as the case may be, of the document record-
ing the invention, or the evidence of the trial thereof, if required,
would be detrimental to the public interest, it may be made con-
fidentially to counsel on behalf of the applicant or patentee, or to
any independent expert mutually agreed upon.
(4) In the event of any dispute as to the making, use or
exercise of an invention under this section, or the terms therefor,
or as to the existence or scope of any record or trial as aforesaid,
the matter shall be referred to the High Court for decision, who
shall have power to refer the whole matter or any question or issue
of fact arising thereon to be tried before a special or official referee
or an arbitrator upon such terms as it may direct. The Court,
APPENDIX V
1009
referee or arbitrator! as the case may be, may, with the consent
of the parties, take into consideration the validity of the patent
for the purposes only of the reference and for the determination
of the issues between the applicant or patentee and such officers or
authorities. The Court, referee or arbitrator, further, in settling
the terms as aforesaid, shall be entitled to take into consideration
any benefit or compensation which the applicant or patentee, or
any other person interested in the patent, may have received directly
or indirectly from the Crown or from such officers or authorities in
respect of such patent :
Provided that, if the inventor or patentee is a Government
servant and the subject-matter of the invention is certified by the
Governor General in Council or Local Government to be connected
with work done in the course of such service, any such dispute
shall be settled by the Governor General in Council after hearing
the applicant or patentee and any other person having an interest
in the invention or patent.
(5) The right to use an invention for the services of the Crown
under the provisions of this section, or any provisions for which
this -section is substituted, shall include, and shall be deemed
always to have included, the power to sell any articles made
in pursuance of such right which arc no longer required for the
services of the Crown.
(6) Nothing in this section shall affect the right of the Crown
or of any person deriving title directly or indirectly from the
Crown to sell or use any articles forfeited under any law for the
time being in force relating to customs or excise.
[Compare Sec. 29 of the English Act.]
21 A. Assignment of patent to the Secretary of State for India
in Council. — (1) The inventor of any improvement in instruments or
munitions of war may (either for or without valuable consideration)
assign to the Secretary of State for India iu Council on behalf of
His Majesty all the benefit of the invention and of any patent
obtained or to be obtained for the invention ; and the Secretary of
State for India in Council may be a party to the assignment.
(2) The assignment shall effectually vest the benefit of the in-
vention and patent in the Secretary of State for India in Council
1070
THE LAW OF PATENTS IN INDIA
ou behalf of His Majesty, and all covenants and agreements therein
contained for keeping the invention secret and otherwise shall be
valid and effectual (notwithstanding any want of valuable consi-
deration), and may be enforced accordingly by or on behalf of the
Secretary of State for India in Council.
(3) Where any such assignment has been made, the Governor
General in Council may, at any time before the publication of the
specification, certify to the Controller that, in the interest of the
public service, the particulars of the invention and of the manner
in which it is to be performed should be kept secret.
(4) If the Governor General in Council so certify, the applica-
tion and specifications, with the drawings (if any), and any amend-
ment of the specification and any copies of such documents and
drawings, shall, instead of being left in the ordinary manner at the
Patent Office, be delivered to the Controller in a packet sealed by
authority of the Governor General in Council.
(5) The packet shall, until tho expiration of the term during
which a patent for the invention may be in force, be kept scaled by
the Controller, and shall not be opened save under the authority of
an order of the Governor General in Council.
(6) The sealed packet shall be delivered at any time during
the continuance of the patent to any person authorised by the
Governor General in Council to receive it, and shall, if returned to
the Controller, be again kept sealed by him.
(7) On tlie expiration of the term of the patent, the sealed
packet shall be delivered to the Governor General in Council.
(8) Where the Governor General in Council certifies as afore-
said after an application for a patent has been left at the Patent
Office but before the publication of the specification, the application
and specifications, with the drawings (if any), shall be forthwith
placed in a packet sealed by authority of the Controller, and the
packet shall be subject to the foregoing provisions respecting a
packet sealed by authority of the Governor General in Council.
(9) No proceeding by petition or otherwise shall lie for revo-
cation of a patent granted for an invention in relation to which a
certificate has been given by the Governor General in Council as
Aforesaid.
APPENDIX V
1071
(10) No copy of any specification or other document or draw-
ing, by this section required to be placed in a sealed packet, shall in
any manner whatever be published or open to the inspection of the
public, but, save as otherwise provided in this section, the provi-
sions of this Act shall apply in respect of any such invention and
patent as aforesaid.
(11) The Governor General in Council may at any time waive
the benefit of this section* with respect to any particular invention,
and the specifications, documents and drawings shall be thenceforth
kept and dealt with in the ordinary way.
(12) The communication of any invention for any improvement
in instruments or munitions of war to the Secretary of State for
India in Council or the Governor General in Council or to any per-
son or persons authorised by the Secretary of State for India in
Council or the Governor General in Council to investigate the same
or the merits thereof, shall not, nor shall anything done for the
purposes of the investigation, be deemed use or publication of such
invention so as to prejudice the grant or validity of any patent for
the same.
(Compare Sec. 30 of the English Act..]
Compulsory Licenses and Revocation.
22. Compulsory licenses and revocation. — (1) Any person
interested may present a petition to the Governor General in Coun-
cil, which shall be left at the Patent Office, together with the pres-
cribed fee, alleging that the demand for a patented article in British
India is not being met to an adequate extent and on reasonable
terms and praying for the grant of a compulsory license, or, in the
alternative, for the revocation of the patent.
(2) The Governor General in Council shall consider the peti-
tion, and if the parties do not come to an arrangement between
themselves the Governor General in Council may, as he thinks fit,
either dispose of the petition himself or refer it to a High Court for
decision.
(3) The provisions of sub-section (4) of section 15, prescribing
the procedure to be followed in the case of references to the Court
under that section, shall apply in the case of references made to the
Court under this section.
1072
THE LAW OF PATENTS IN INDIA
(4) If the Governor General in Council is of opinion, or,
where a reference has been made under sub-section (2) to a High
Court that Court, finds that the demand for the patented article in
British India is not being met to an adequate extent and on reason-
able terms, the patentee may be ordered to grant licenses on such
terms as the Governor General in Council or the High Court, as the
case may be, may think just, or, if the Governor General in Council
or the High Court is of opinion that the demand will not be ade-
quately met by the grant of licenses, the patent may be revoked by
order of the Governor General in Council or the High Court :
Provided that an order of revocation shall not be made before
the expiration of four years from the date of the patent, or if the
patentee gives satisfactory reasons for his default.
(5) For the purposes of this section the demand for a patented
article shall not be deemed to have been met to an adequate extent
and on reasonable terms —
(a) if by reason of the default of the patentee to manufac-
ture to an adequate extent and supply on reasonable
terms the patented article, or any parts thereof which
are necessary for its efficient working, or to carry on
the patented process to an adequate extent or to grant
licenses on reasonable terms, any existing trade or
industry or the establishment of any new trade or
industry in British India is unfairly prejudiced, or,
(/>) if any trade or industry in British India is unfairly
prejudiced by the conditions attached by the patentee
to the purchase, hire or use of the patented article or to
the using or working of the patented process.
[.See Sec. 27 of the English Act.]
23. Revocation of patents worked outside British India. —
(1) At any time not less than four years after the date of a patent
granted under this Act, any person may apply to the Governor
General in Council for relief under this section on the ground that
the patented article or process is manufactured or carried on
exclusively or mainly outside British India.
(2) The Governor General in Council shall consider the
application, and, if after inquiry, he is satisfied—
APPENDIX V
1073
(a) that the allegations contained therein are oorreot ; and
(b) that the applicant is prepared, and is in a position, to
manufacture or carry on the patented article or process
in British India ; and
(c) that the patentee refuses to grant a license on reason*
able terms,
then, subject to the provisions of this section, and unless the patentee
proves that the patented article or process is manufactured or
carried on to an adequate extent in British India, or gives satisfac-
tory reasons why the article or process is not so manufactured or
carried on, the Governor General in Council may make an order —
(a) revoking the patent either —
(*) forthwith ; or
(it) after such reasonable interval as may be specified
in the order, unless in the meantime it is shown to
his satisfaction that the patented article or process
is manufactured or carried on within British India
to an adequate extent, or
{ b ) ordering the patentee to grant a license to the appli-
cant which may be a license exclusive to him or other-
wise as the Governor General in Council may direct.
(3) No order revoking a patent shall bo made under the last
sub-section which is at variance with any treaty, convention,
arrangement or engagement with any foreign country or British
possession.
( 4) The Governor General in Council may, on the application
of the patentee, extend the time limited in any order made under
sub-section (2), clause (it), for such period not exceeding two years
as he may specify in a subsequent order, or revoke any order made
under sub-section (2), clause (ii), or any subsequent order if suffi-
cient cause is in Mb opinion shown by the patentee.
[Regarding the abuse of a monopoly and the objections on the
grounds of inadequate supply or of manufacture outside British
India which are mentioned in Sections 22 and 23 and the remedies
available therefor, see Chapter VIII. See Sec. 27 of the English
Act.]
135
1074
THE LAW OF PATENTS IN INDIA
23A. Operation of order under section 22 or section 23. — An
order of the High Court under section 22 or of the Governor General
in Council under section 22 or seotion 23, directing the grant of
any license shall, without prejudice to any other method of enforce-
ment, operate as if it were embodied in a deed granting a license
and executed by the patentee and all other necessary parties.
[Compare sec. 83A of the English Act.]
24. Power of Controller to revoke surrendered patent. — A
patentee may at any time, by giving notice in the prescribed manner
to the Controller, offer to surrender his patent, and the Controller
may, if after giving notice of the offer and hearing all parties who
desire to be heard he thinks fit, accept the offer, and thereupon
make an order for the revocation of the patent.
[For termination of a Patent by surrender see page 472.
Compare sec. 26 (3) of the English Act.]
25. Revocation of patent on public grounds. — A patent shall
be deemed to be revoked if the Governor General in Council
declares, by notification in the Gazette of India, the patent or the
mode in which it is exercised to be mischievous to tho State or
generally prejudicial to the public.
[See page 473.]
Legal Proceedings
26. Petition for revocation of patent.— (1) Revocation of a
patent in whole or in part may be obtained on petition to a High
Court on all or any of the following grounds, namely
(a) that any invention included in the statement of claim is
of no utility ;
(5) that any invention included in the statement of claim
was not, at the date of the application for a patent, a
new invention within the meaning of this Act ;
(c) that the applicant was not the true and first inventor
thereof or the assign or legal representative of such
inventor thereof ;
(d) that, the original or any amended application or specifica-
tion does not fulfil the requirements of this Act ;
(e) that the applicant has knowingly or fraudulently included
APPENDIX V
1075
in the application for a patent or in the original or any
amended specification, as his invention, something whioh
was not new or whereof he was neither the inventor nor
the assign nor the legal representative of such inventor ;
(f) that the original or any subsequent application relating
to the invention, or the original or any amended speci-
fication, contains a wilful or fraudulent mis-statement ;
(g) that the whole or a part of the invention or the manner
in which the whole or a part is to be made and used
as described in the original or any amended specification,
is not thereby sufficiently described, and that this insuffi-
ciency was fraudulent or is injurious to the public.
(2) A petition for revocation of a patent may be presented —
(а) by the Advocate G eneral or any person authorized by him;
or
(б) by any person alleging —
(i) that the patent was obtained in fraud of his rights, or
of the rights of any person under or through whom
he claims ; or
(ii) that he, or any person under or through whom he
claims, was the true and first inventor of any invention
included in the claim of the patentee ; or
(in) that he, or any person under or through whom ho
claims an interest in any trade, business or manu-
facture, had publicly manufactured, used or sold,
within British India, before the date of the patent,
anything claimed by the patentee as his invention.
(3) The High Court may, irrespective of any provisions of tho
Code of Civil Procedure, 1908, in this behalf, require any person,
other than the Advocate General or any person authorized by him,
applying for the revocation of a patent to give security for the
payment of all costs incurred or likely to be incurred by any person
appearing to oppose the petition.
[As to grounds of invalidity in general see Chapers VI, VII,
and VIII. As to the grounds covered by this section see page 451 :
and pages 595 to 601. As to revocation proceedings on Petition to
a High Court see Chapter XI. Compare sec. 25 of the English Act]
1076
THE LAW OF PATENTS IN INDIA
27. Notice of proceedings to persons interested. — (1) Notioe
of any petition for revocation of a patent under section 26 shall be
served on all persons appearing from the register to be proprietors
of that patent or to have shares or interests therein, and it shall not
be necessary to serve the notice on any other person.
(2) The notice shall be deemed to be sufficiently served if a
copy thereof is sent by post in a registered letter directed to the
person and place for the time being stated in the register.
28. Framing issue for trial before other Courts. — (1) A High
Court may, if it thinks fit, direct an issue for the trial, before itself
or any other High Court, or any District Court, of any question
arising upon a petition to itself under section 26, and the issue shall
be tried accordingly.
(2) If the issue is directed to another High Court, the finding
shall be certified by that Court to the High Court directing the
issue.
(3) If the issue is directed to a District Court, the finding of
that Court shall not be subject to appeal, but the evidence taken
upon the trial shall be recorded and a copy thereof, certified by the
Judge of the Court, shall be transmitted, together with any remarks
which he may think fit to make thereon, to the High Court directing
the issue, and the High Court may thereupon act upon the finding
of the District Court, or dispose of the petition upon the evidence
recorded, or direct a new trial, as the justice of the case may
require.
29. Suits for infringement of patents. — (1) A patentee may
institute a suit in a District Court having jurisdiction to try the
suit against any person who, during the continuance of a patent
acquired by him under this Act in respect of an invention, makes,
sells or uses the invention without his license, or counterfeits it, or
imitates it.
(2) Every ground on which a patent may be revoked under this
Act shall be available by way of defence to a suit for infringement.
[As to proceedings in an infringement suit, see Chapter XVII.
As to grounds of invalidity open to a Defendant, see pages 595 et
seq. ' As to what constitutes infringement see Chapters XIV and
APPENDIX V
1077
XV, As to defences open to a Defendant in an infringement suit
see Chapters XIV, XV and XVI. Compare Sec. 32 of the English
Act.]
30. Exemption of innocent infringer from liability for
damages. — A patentee Bhall not be entitled to recover .'any damages
in respect of any infringement of a patent granted after the com-
mencement of this Act from any defendant who proves that at the
date of the infringement he was not aware, nor had reasonable
means of making himself aware, of the existence of the patent, and
marking of an article with the word “patent’', “patented”, or any
word or words expressing or implying that a patent has been ob-
tained for the article, stamped, engraved, impressed on, or otherwise
applied to the article, shall not be deemed to constitute notice of the
existence of the patent unless the word or words are accompanied
by the year and number of the patent :
Provided that nothing in this section shall affect any proceed-
ings for an injunction.
[Regarding this particular defence see page 541 (No. 20) and
page 578. Compare Sec. 33 of the English Act.]
31. Order for inspection, etc,, in suit. — In a suit for infringe-
ment of a patent, the Court may, on the application of either party,
make such order for an injuction, inspection or account, and impose
such terms and give such directions respecting the same and the
proceedings thereon, as the Court may see lit.
[See Chapter XVII, Part V. Compare Sec. 34 of the English
Act.]
32. Certificate of validity questioned and costs thereon. — In
a suit for infringement of a patent the Court may certify that the
validity of the patent came in question, and if the Court so certifies,
then in any subsequent suit in that Court for infringement of the
same patent the plaintiff, on obtaining a final order or judgment in
his favour, shall, unless the Court trying the suit otherwise directs,
have his full costs, charges and expenses of and incidental to the
said suit properly incurred,
[See Chapter XVII, Part V. Compare sec. 35 of the English
Act.]
33. Transmission of decrees and orders to the Controller. — A
Court making a decree in a suit under section 29 or an order on a
■1078
THE LAW OE PATENTS IN INDIA
petition under section 26 shall send a copy of the decree or order,
as the case may be, to the Controller, who shall cause an entry
thereof and reference thereto to be made in the register of patents.
34 Power of High Court to stay proceedings, etc. — A High
Court to which a petition has been presented under section 26 may
stay proceedings on or dismiss the petition if in its opinion the
petition would be disposed of more justly or conveniently by another
High Court.
35. Hearing with assessor. — (1) In a suit or proceeding for
infringement or revocation of a patent, the Court may, if it thinks
fit, and shall on the request of all the parties to the proceedings, call
in the aid of an assessor specially qualified, and try the case wholly
or partially with his assistance.
(2) A Court exercising appellate jurisdiction in respect of such
suit or proceeding may, if it thinks fit, call in the aid of an assessor
as aforesaid.
(3) The remuneration, if any, to be paid to an assessor under
this section shall in every case be determined by the Court and be
paid by it as part of the expenses of the execution of this Act.
[See Chapter XVII, Part III. Compare Sec. 31 of the English
Act.]
35A. Grant of relief in respect of particular claims. — Not-
withstanding anything contained in section 19, if the Court in any
action for infringement of a patent finds that any one or more of the
claims in the specification in respect of which the infringement is
alleged are valid, it may, subject to its discretion as to costs and as
to the date from which damages should be reckoned and to such
terms as to amendment as it may deem desirable, grant relief in
respect of any of Buch claims which are infringed without regard to
the invalidity of any other claim in the specification. In exercising
such discretion the Court may take into consideration the conduct of
the parties in inserting such invalid claims in the specification or
permitting them to remain there.
[See Chapter XVII, Part V. Compare Sec. 32A of the English
Act.]
36. Remedy in case of groundless threats of legal proceed-
ings, — Where any person claiming to have an interest in a patent by
APPENDIX V
1079r
circulars, advertisements or otherwise, threatens any other person
with any legal proceedings or liability in respect of any alleged in-
fringement of the patent, any person aggrieved thereby may bring a
suit against him in a District Court having jurisdiction to try the
suit, and may obtain an injunction against the continuance of such
threats, and may recover such damage (if any) as he has sustained
thereby, if the alleged infringement to which the threats related was
not in fact an infringement of the patent :
Provided that this section shall not apply if an action for in-
fringement of the patent is commenced and prosecuted with due
diligence.
[For proceedings on a suit for threats, see Chapter XIX.
Compare Sec. 36 of the English Act.]
Miscellaneous.
37. Grant of patents to two or more persons. — Where, after
the commencement of this Act, a patent is granted to two or more
persons jointly, they shall, unless otherwise specified in the patent,
be treated for the purpose of the devolution of the legal interest
therein as joint tenants, but, subject to any contract to the contrary,
each of such persons shall be entitled to use the invention for his
own profit without accounting to the others, but shall not be entitled
to grant a license without their consent, and, if any such person
dies, his beneficial interest in the patent shall devolve on his legal
representatives.
[On the point whether all co-patentees must join as Plaintiffs
in a suit for infringement see Chapter XVII, Part II. As to the
defence of a Co-patentee in regard to an infringement suit sought to
be brought against him by another co-patentee, see page 541 (No. 17)
and page 578. Compare Sec. 37 of the English Act.]
38. Novelty of invention. — (1) An invention shall be deemed
a new invention within the meaning of this Act —
(a) if it has not, before the date of the application for a
patent thereon, been publicly used in any part of
British India, or been made publicly known in any
part of British India, and
(5) if the inventor has not by secret or experimental user
1060
THE LAW OF PATENTS IN INDIA
made direct or indirect profits from his invention in
excess of such an amount as the Court or the Governor
General in Council, as the case may be, may, in consi-
deration of all the circumstances of the case, deem
reasonable.
(2) The public use or knowledge of an invention before the
date of the application for a patent thereon shall not be deemed a
public use or knowledge within the meaning of this Act if the
knowledge has been obtained surreptitiously or in fraud of the true
and first inventor or has been communicated to the public in fraud
of such inventor or in breach of confidence :
Provided that such inventor has not acquiesced in the public
use of his invention, and that, within six months after the com-
mencement of that use, he applies for a patent.
[Regarding want of novelty sec Chapter VI Part III. As to
prior user see page 174 et. seq. As to prior documentary publication
see pages 194 to 217. As to prior oral publication see page 204.
A 8 to secret or experimental user without unreasonable profit see
pages 190 to 193. Compare Sec. 41 of the English Act.]
39. Loss or destruction of patent. — If a patent is lost or des-
troyed, or its non-production is accounted for to the satisfaction of
the Controller, the Controller may at any time, on payment of the
prescribed fee, seal a duplicate thereof.
[Compare Sec. 44 of the English Act.]
40. Provisions as to exhibitions. — (1) The exhibition of an
invention at an industrial or international exhibition, certified as
such by the Governor General in Council, or the publication of any
description of the invention during the period of the holding of the
exhibition, or the use of the invention for the purpose of the exhibi-
tion, in the place where the exhibition is held, or the use of the
invention during the period of the holding of the exhibition by any
person elsewhere, without the privity or consent of the inventor,
shall not prejudioe the right of the inventor to apply for and obtain
a patent in respect of the invention or the validity of any patent
granted on the application :
Provided that —
(a) the exhibitor, before exhibiting the invention, gives tho
APPENDIX V
1081
Controller the prescribed notice of his intention to do
so ; and
(b) the application for a patent is made before or within six
months from the date of the opening of the exhibition.
(2) The Governor General in Council may, by notification in
the Gazette of India, apply this section to any exhibition mentioned
in the notification in like manner as if it were an industrial or inter-
national exhibition certified as such by the Governor General in
Counoil, and any such notification may provide that the exhibitor
shall be relieved from the condition of giving notice to the Controller
of his intention to exhibit, and shall be so relieved either absolutely
or upon such terms and conditions as may be stated in the noti-
fication.
[See Page 19. Compare Sec. 45 of the English Act.]
41. Models to be furnished to Indian Museum. — The trustees
of the Indian Museum may at any time require a patentee to furnish
them with a model or sample of his invention on payment to the
patentee of the cost of the manufacture of the model or sample, the
amount to be settled, in case of dispute, by the Governor General in
Council.
[Compare Sec. 47 (2) of the English Act.]
42. Foreign vessels in British Indian waters. — (1) A patent
shall not prevent the use of an invention for the purposes of the
navigation of a foreign vessel within the juristiction of any Court in
British India, or the use of an invention in a foreign vessel within
that jurisdiction, provided it is not used therein for or in connection
with the manufacture or preparation of anything intended to be sold
in or exported from British India.
(2) This section shall not extend to vessels of any foreign
State of which the laws do not confer corresponding rights with
respect to the use of inventions in British vessels while in the ports
of that State or in the waters within the jurisdiction of its Courts.
[See page 551. Compare Sec. 48 of the English Aot.]
136
1062
THE LAW OF PATENTS IN INDIA
PART II
DESIGNS
[N. B. Sections 43 to 54 comprising Part II, since these relate
exclusively to Designs, have here been omitted.]
PART III
GENERAL
Patent Office and Proceedings thereat.
55. Patent office. — (1) The Governor General in Council may
provide, for the purposes of this Act, an office which shall be called,
and is in this Act referred to as, the Patent Office.
(2) The Patent Office shall be under the immediate control of
the Controller of Patents and Designs, who shall act under the
superintendence and direction of the Governor General in Council.
(3) There shall be a seal for the Patent Office.
(4) Any act or thing directed to be done by or to the Con-
troller may be done by or to any officer authorized by the Governor
General in Council.
[Regarding the Indian Patent office and its functions in the
system of Patent administration in British India see Chapter V.
As to the powers and duties of the Controller of Patents see pages
71 to 85. Compare Sec. 62 and Sec. 64 of the English Act.]
56. Officers v and clerks. — The Governor General in Council
may appoint the Controller, and so many officers and clerks, with
such designations and duties, as he thinks fit.
[Compare Sec. 63 of the English Act.]
Fees.
57. Fees. — (1) There shall be paid in respect of the grant of
patents and the registration of designs, and applications therefor, and
in respect of other matters with relation to the patents and designs
under this Act, such feeB as may be prescribed by the Governor
General in Council, so however that the fees prescribed in respect
of the instruments and matters mentioned in the schedule shall not
^exceed those there specified.
(2) A proceeding in respect of which a fee is payable under
APPENDIX V
2063
this Act or the rules made thereunder shall be of no effect unless the
fee has been paid.
[Regarding renewal fees see Chapter III. Compare Sec. 65 of
the English Aot.]
Provisions as to Registers and other Documents in the
Patent Office.
58. Notice of trust not to be entered in registers. — There
shall not be entered in any register kept under this Act, or be recei-
vable by the Controller, any notice of any trust, expressed, implied
or constructive.
[Sec. 66 of the English Act.]
59. Inspection of and extracts from registers. — Every regis-
ter kept under this Act shall at all convenient times be open to the
inspection of the public, subject to the provisions of this Aot ; and
certified oopies, sealed with the seal of the Patent Office, of any
entry in any such register shall be given to any person requiring the
same on payment of the prescribed fee.
[Compare Sec. 67 of the English Act.]
60. Privilege of reports of Controller. — Reports of or to the
Controller made under this Act shall not in any case be published or
be open to public inspection.
[See pages 397 & 398. Compare Sec. 68 of the English Act.]
61. Prohibition of publication of specification, drawings, etc.,
where application abandoned, etc. — (1) Where an application for a
patent has been abandoned or become void, the specifications and
drawings (if any), accompanying or left in connection with such
application, shall not, save as otherwise expressly provided by this
Act, at any time be open to public inspection or be published by the
Controller.
(2). Where an application for a design has been abandoned or
refused, the application and any drawings, photographs, tracings,
representations or specimens left in connection with the application
shall not at any time be open to publio inspection or. be published by
the Controller.
[Compare Sec. 69 of the English Act.]
62. Power for Controller to correct clerical errors.— The
1064 THE LAW OF PATENTS IN INDIA
Controller, may, on request in writing accompanied by the presoribed
fee, —
(a) correct any clerical error in -or in connection with an
application for a patent or in any patent or any sped*
fication ;
(c) correct any clerical error in the representation of a
design or in the name or address of the proprietor of
any patent or design, or in any other matter which is
entered upon the register of patents or the register of
designs.
[See page 493 ; also page 494 et seq. Compare Sec. 70 of the
English Act.]
63. Entry of assignments and transmissions in registers. —
(1) Where a person becomes entitled by assignment, transmis-
sion or other operation of law to a patent or to the copyright
in a registered design, he may make application to the Controller
to register his title, and the Controller shall,* on reoeipt of such
application and on proof of title to his satisfaction, register him
as the proprietor of Buch patent or design, and shall cause an
entry to be made in the prescribed manner in the register of the
assignment, transmission or other instrument affecting the title.
(2) Where any person becomes entitled as mortgagee, licensee
or otherwise to any interest in a patent or registered design, he may
make application to the Controller to register his title, and the
Controller shall, on receipt of such application and on proof of title
to his satisfaction, cause notice of the interest to be entered in the
presoribed manner in the register of patents or designs, as the case
may be, with particulars of the instrument, if any, creating such
interest.
(3) The person registered as the proprietor of a patent or
design shall, subject to the provisions of this Act and to any rights
appearing from the register to be vested in any other person, have
power absolutely to assign, grant licenses as to, or otherwise deal
with, the patent or design and to give effectual receipts for any con-
sideration for any such assignment, license or dealing :
Provided that any equities in respect of the patent or design
APPENDIX V
1065
may be enforced in like manner as in respect of any other moveable
property.
(4) Except in the case of an application made under section
64, a document or instrument in respect of which no entry has been
made in the register in accordance with the provisions of subsections
(1) and (2) shall not be admitted in evidence in any Court in proof of
the title to a patent or to copyright in a design or to any interest
therein, unless the Court, for reasons to be recorded in writing, other*
wise directs.
[See also Section 20 and Section 29(1). And see page 582 and
page 588. Compare Sec. 71 of the English Act.]
64. Rectification of register by Court. — (1) The Controller
may, on the application in the prescribed manner of any person
aggrieved by the non-insertion in or omission from the register of
patents or designs of any entry, or by any entry made in either
such register without sufficient cause, or by any entry wrongly
remaining on either such register, or by an error or defeot in any
entry in either such register, make such order for making, expung-
ing or varying such entry as he thinks fit and rectify the register
accordingly.
(2) The Controller may in any proceeding under this section
decide any question that it may be necessary or expedient to decide
in connection with the rectification of a register.
(3) An appeal shall lie to the High Court from any order of
the Controller under this section ; and the Controller may refer any
application under this section to the High Court for decision, and
the High Court shall dispose of any application so referred.
(4) Any order of the Court rectifying a register shall direct
that notice of the rectification be served on the Controller in the
prescribed manner, who shall upon the receipt of such notice rectify
the register accordingly.
(5) Nothing in this section shall be deemed to empower the
Controller —
(a) to rectify the register of patents, or to decide any ques-
tion relating to a patent, otherwise than for the purpose
of correcting a mistake of fact apparent from a refe-
rence either to the patent itself or to some order of a
1086
THE LAW OF PATENTS IN INDIA
competent authority made under any other provision of
this Act, or
(b) to make any such order cancelling the registration of a
design as is provided for in section 51A.
[See also Section 20 and Section 29(1) also page 582 and
page 588. Compare Sec. 72 of the English Act.]
Powers and Duties ot Controller.
65. Powers ot Controller in proceedings under Act. — Subject
to any rules in this behalf, the Controller in any proceedings before
him under this Act shall have the powers of a Civil Court for the
purpose of receiving evidence and administering oaths and enforcing
the attendance of witnesses and compelling the production of docu-
ments and awarding costs.
[Regarding the powers and duties of the Controller of Patents
see page 71. Compare Sec. 77 of the English Act.]
66. Publication of patented inventions. — The Controller shall
issue periodically a publication of patented inventions containing
such information as the Governor General in Council may direct.
[As to publications issued by and kept at the Indian Patent
Office see page 65 et. seq. And as to how far such publications
constitute public knowledge see Chapter VI at page 205 et. seq.
Compare Sec. 76 of the English Act.]
67. Exercise of discretionary power by Controller. — Where
any discretionary power is by or under this Act given to the Con-
troller, he shall not exercise that power adversely to the applicant
for a patent, or for amendment of an application or of a specifica-
tion, or for registration of a design, without (if so required within
the prescribed time by the applicant) giving the applicant an oppor-
tunity of being heard.
[See page 76. Sec. 73 of the English Act.]
68. Power of Controller to take directions of Governor
General In Council. — The Controller may, in any case of doubt or
difficulty arising in the administration of any of the provisions of
this Act, apply to the Governor General in Council for directions in
the matter.
[See page 80. Compare Sec. 74, since repealed, of the English
Aot.]
APPENDIX V
106 ?
69. Refusal to grant patent, ete., in certain eases. — (1 ) The
Controller may refuse to grant a patent for an invention, or to regis-
ter a design, of which the use would, in his opinion, be contrary to
law or morality.
(2) An appeal shall Ue to the Governor General in Council
from an order of the Controller under this section.
[See pages 119, 161, 162, 165 and 166. Compare Sec. 75 of the
English Act.]
70. Appeals to the Governor General in Council. — (1) Where
an appeal is declared by this Act to lie from the Controller to the
Governor General in Council, the appeal shall be made within three
months of the date of the order passed by the Controller, and shall
be in writing, aud accompanied by the prescribed fee.
(2) In calculating the said period of three months the time
(if any) occupied in granting a copy of the order appealed against
shall be excluded.
(3) The Governor General in Council may, if he thinks fit,
obtain the assistance of an expert in deciding such appeals, and the
decision of the Governor General in Council shall be final.
[See Chapter XX.]
Evidence, etc.
71. Certificate of Controller to be evidence. — A certificate
purporting to be under the hand of the Controller as to any entry,
matter or thing which he is authorized by this Act, or any rules made
thereunder, to make or do, shall be prima facie evidence of the entry
having been made, and of the contents thereof, and of the matter or
thing having been done or left undone.
[Sec. 78 of the English Act.]
72. Transmission of certified printed copies of specifications,
etc. — Copies of all specifications, drawings and amendments left at
the Patent Office after the commencement of this Act, printed for
and sealed with the seal of the Patent Office, shall be transmitted as
soon as may be, after they have been accepted or allowed at the Patent
Office, to the Governor of Fort St. George in Counoil, the Governor
of Bombay in Counoil, the Lieutenant-Governor of Burma and to
such other authorities as the Governor General in Counoil may
1088 . THE LAW OP PATENTS IN INDIA
appoint in this behalf, and shall be open to the inspection of any
person at all reasonable times at plaoes to be appointed by those
authorities.
[Compare Sec. 80, sinoe repealed, of the English Act.]
73. Applications and notices by post. — Any application,
notice or other document authorized or required to be lefty made or
given at the Patent Office or to the Controller, or to any other
person under this Act, may be sent by post.
[Sec. 81 of the English Act.]
74. Declaration by infant, lunatic, etc. — (1) If any person is,
by reason of infancy, lunacy or other disability, incapable of making
any statement or doing anything required or permitted by or under
this Act, the lawful guardian, committee or manager (if any) of the
person subject to the disability, or if there be none, any person
appointed by any Court possessing jurisdiction in respect of his
property, may make such statement or a statement as nearly corres-
ponding thereto as circumstances permit, and do such thing in the
name and on behalf of the person subject to the disability.
(2) An appointment may be made by the Court for the pur-
poses of this section upon the petition of any person acting on behalf
of the person subject to the disability or of any other person inte-
rested in the making of the statement or the doing of the thing.
[Compare Sec. 83 of the English Act.]
74A. Security for costs. — Where a person giving notice of
any opposition under this Act or giving notice to the Court of
appeal from any decision of the Controller under this Act, neither
resides nor carries on business in British India, the Controller or the
Court, as the case may be, may require such person to give security
for the payment of all costs incurred and likely to be incurred in the
proceedings or appeal, as the case may be, and, in default of such
security being given, may disallow the opposition or dismiss the
appeal.
[See page 81. Compare Sec. 73A of the English Act.]
Agency.
75. Subscription and verification of certain documents. — The
following documents, namely, —
(1) applications for a patent,
APPENDIX V
1069
(2) notices of opposition,
(3) applications for extension of term of a patent,
(4) applications for the restoration of lapsed patents,
(5) applications for leave to amend,
(6) applications for compulsory license or revocation, and
(7) notices of surrenders of patent,
shall be signed and verified, in the manner prescribed, by the person
making such applications or giving such notices :
Provided that, if such person is absent from British India,
they may be signed and verified on his behalf by an agent resident
in British India authorized by him in writing in that behalf.
[See page 90.]
76. Agency. — (1) All other applications and communications
to the Controller under this Act may be signed by, and all atten-
dances upon the Controller may be made by or through a legal
practitioner or by or through an agent authorized to the satisfaction
of the Controller.
(2) The Controller may, if he sees tit, require —
(a) any such agent to be resident in British India ;
(A) any person not residing in British Tndia to employ an
agent residing in British India ;
(c) the personal signature or presence of any applicant,
opponent or other person.
[Regarding the authority requisite for an agent within this
section, see page 107. As to Patent Agents generally see Chapter V
from page 90.]
Powers, etc., of Governor General in Council.
77. Power for Governor General in Council to make rules. —
(1) The Governor General in Council may make such rules, as he
thinks expedient, subject to the provisions of this Act —
(a) for regulating the practice of registration under this
Act ;
(A) for classifying goods for the purposes of designs ;
(c) for making or requiring duplicates of specifications,
drawings and other documents ;
(d) for securing and regulating the publishing and selling
137
1000
THE LAW OF PATENTS IN INDIA
of oopies, at such prices aud in suoh manner as the
Governor General in Council thinks fit, of specifications,
drawings and other documents ;
(e) for securing and regulating the making, printing, publish*
shing, and selling of indexes to, and abridgments of,
specifications and other documents in the Patent Office ;
and providing for the inspection of indexes and abridg-
ments and other documents ;
(ee) for the manner in which fees leviable under this Act
may be paid ;
(eee) for ensuring secrecy with respect to patents to which
section 21A applies ;
(f) generally for regulating the business of the Patent
Office, the conduct of proceedings before the Controller,
and all things by this act placed under the direction or
control of the Controller or of the Governor General in
Council ; and
(g) generally for the purpose of carrying into effect the pro-
visions of this Act.
(2) - The power to make rules under this section shall be
subject to the condition of the rules being made after previous publi-
cation.
(2A) Nothing in sub-section (2) shall apply in the case of rules
made for the purpose specified in clause (eee) of sub-section (1) ; and
any suoh rules may modify any of the provisions of this Act so far
as may be necessary for that purpose.
(3) All rules made under this section shall be published in the
Gazette of India, and on such publication shall have effect as is
enacted in this Act.
[See pages 21 & 22. Compare Sec. 86 of the English Act.]
Offences.
78. Wrongful use of words "Patent Office”.— If any person
uses on his place of business, or on any document issued by him, or
otherwise, the words "Patent Office,” or any other words suggesting
that his place of business is officially connected with, or is, the
Patent Offioe, he shall be punishable with fine which may extend to
APPENDIX V
1001
two hundred rupees, and, in the case of a continuing offenoe, with
further fine of twenty rupees for each day on which the offence is
continued after conviction therefor.
[Compare Sec. 89(5) of the English.Act.]
Reciprocal arrangements with the United Kingdom and other
parts of His Majesty’s dominions.
78A. Reciprocal arrangements with the United Kingdom and
other parts of His Majesty’s dominions : 7 Edw. VII, c. 29. — (1) If
His Majesty is pleased by Order in Council to apply such of the
provisions of Section 91 of the Patents and Designs Act, 1907, as
relate to inventions or designs, to British India, then any person who
has applied for protection for any invention or design in the United
Kingdom, or his legal representative or assignee, shall be entitled to
a patent for his invention or to registration of his design under this
Act, in priority to other applicants ; and the patent or registration
shall have the same date as the date of the application in the United
Kingdom :
Provided that —
(«) the application is made in the case of a patent within
twelve months, and, in the case of a design, within six
months from the application for proteotion in the United
Kingdom ; and
(b) nothing in this section shall entitle the pateutee or the
proprietor of the design to recover damages for infringe-
ments happening prior to the actual date on which, in the
case of a patent, his application is accepted, or, in the
case of a design, the design is registered, in British
India.
(2) The patent granted for an invention or the registration of
a design shall not be invalidated —
(a) in the case of a patent, by reason only of the publica-
tion of a description of, or use of, the invention, or
(5) in the case of a design, by reason only of the exhibition
or use of, or the publication of a description or repre-
sentation of, the design,
in British India during the period speoified in this section as that
within whioh the application may be made.
THE LAW OF PATENTS IN INDIA
1092
(3) The application for the grant of a patent or the registra-
tion of a design under this section must be made in the same manner
as an ordinary application under this Act :
Provided that in the case of a patent, if the application is not
accepted within twelve months from the date of the application for
protection in the United Kingdom, the specification and the drawings
(if any) supplied therewith shall be open to public inspection at the
expiration of that period.
(4) Where it is made to appear to the Governor General in
Council that the legislature of any other part of His Majesty’s domi-
nions or of any State in India has made satisfactory provision for
the protection of inventions or designs, patented or registered in
British India, the Governor General in Council may, by notification
in the Gazette of India, direct that the provisions of this section,
with such variations or additions, if any, as may be set out in such
notification, shall apply for the protection of inventions or designs
patented or registered in that part of His Majesty's dominions or
that State, as the case may be.
[Regarding the reciprocal arrangements referred to in this
section, see Chapter IX from page 352 to 365. Compare Sec. 91 of
the English Act.]
Savings and Repeal.
79. Savings for prerogative. — Nothing in this Act shall take
away, abridge oivprejudicially affect the prerogative of the Crown in
relation to the granting of any letters patent or to the withholding
of a grant thereof.
[See page 16. Sec. 97 of the English Act.]
80. [Repealed by the Repealing Act, 1927 (Act 12 of 1927).]
81. [Repealed by the Repealing and Amending Act, 1920
{Act 31 of 1920).]
THE SCHEDULE.
(See Section 57.)
Fees.
Rs.
On application for a patent ... ... ... ... 10
Before sealing a patent ... ... ... ... 30
Before the expiration of the 4th year from the date of the
patent ... ... ... ... ... 50
Before the expiration of the 5th year from the date of the
patent ... ... ... ... ... 50
Before the expiration of the 6th year from the date of the
patent ... ... ... ... ... 50
Before the expiration of the 7th year from the date of the
patent ... ... ... ... ... 50
Before the expiration of the 8th year from the date of the
patent ... ... ... ... ... 100
Before the expiration of the 9th year from the date of the
patent ... ... ... ... ... 100
Before the expiration of the 10th year from the date of the
patent ... ... ... ... ... 100
Before the expiration of the 11th year from the date of the
patent ... ... ... ... ... 100
Before the expiration of the 12th year from the date of the
patent ... ... ... ... ... 150
Before the expiration of the 13th year from the date of the
patent ... ... ... ... ... 150
Before the expiration of the 14th year from the date of the
patent ... ... ... ... ... 150
Before the expiration of the 15th year from the date of the
patent ... ... ... ... ... 150
10W
THE LAW OF PATENTS IN INDIA
Provided that the fees for two or more years may be paid in
advance. Rs.
On application to extend the term of a patent ... ... 50
Before the expiration of each year of the extended term of a
patent or of a new patent granted under section 15 ... 150
On application for registration of a design ... ... 3
APPENDIX V
1095
[The following Rules s were passed under llie powers conferred by Section 57(1')
(as to fees) and by Section 77 (1) (generally) of the foregoing Act. ]
APPENDIX V
1007
INDIAN PATENT8 AND DE8IGN8 RULES, 1833.
[N,B. — These rules were published in the “ Gazette of India,” dated 2nd April
1932, Part II, and finally in the “ Gazette of India ” dated nth February 1933 , Part
II. They superseded the previous Indian Patents and Designs Rules of 1912; and
came into force on ist April 1933 . They are here printed in the form in which they
are current u nth all amendments up to date(i.e., as on 31st October 1936).]
Notlftoation No. A107, dated the 2nd February 1033. — In exercise of the
(towers conferred by sub-section (1) of section 57 and sub-section (1) of
section 77 of the Indian Patents and Designs Act, 1911 (II of 1911), the
Governor-deneral-in Counci] is pleased to make the following rules, the same
having been previously published as required by sub-section (2) of the lust named
section, namely: —
CHAPTER I.
PRELIMINARY.
1. Short title and eommeneement. (1) These rules may be called the
Indian Patents and Designs Rules, 1935.
(2) They shall come into force on the 1st April 1933.
L Compare Rule 1 of the English Patents Pules. 1932.]
2. Definition*.— Ill these rules, unless there is anything repugnant in the
subject or context, —
(a) “Act” means the Indian Patents and Designs Act, 1911;
(h) “ British Application ” means an application by any person
for the protection, in any part of Mis Majesty’s dominions or in
any State, in India, of an invention, for the protection of which
in British India the provisions of section 78A of the Ad are for
the time being applicable;
(c) “ Controller ” means the. Controller of Patents and Designs
appointed under section 56 of the Act, and; includes any officer
appointed to act for him;
(d) “ Office '* means the Patent. Office provided under section 55 of
the Act;
(#*) “ Reciprocity Application ” means an application in British India
under section 78A of the Act ;
(f) “Set” means a number of articles of the same general character
ordinarily on sale together, or intended to be used together, all
bearing the same design, with or without modifications not
sufficient to alter the character or substantially to affect the
identity thereof.
[Compare Rule 2 of the English Patents Rules, 1932.]
3. Communication* to the Office. — Any application, notice, or other
document authorised or required to be left, made or given at the Office, or to the
Controller, may be sent by hand, or by a prepaid letter through the post, addressed
to the Controller of Patents and Designs, 1, Council House Street, Calcutta, and,
if sent by a prepaid letter, shall be deemed to have beeu left, made or given
at the time when the letter containing the same would be delivered in the ordinary
course of post. In proving such sending, it shall be sufficient to prove that the
letter was properly addressed and put into the post.
[Compare Rule 6 of the English Patents Rules, 1932.]
138
1008
THE LAW OF PATENTS IN INDIA
4. Address for service.— Every applicant or opponent in any proceeding
under the Act or these rules, and every person who shall hereafter become a
patentee or a registered proprietor of a design, shall give an address for service
in British India, and such address may be treated, for all purposes connected
with the patent or the design, as the actual address of such applicant, opponent,
patentee or registered proprietor. Unless such an address is given, the Controller
shall be under no obligation either to proceed with the application or the opposi-
tion, or to send any notice that may be required by the Act or these rules.
[Compare Rule 7 of the English Patents Rules, 1932.]
5. Fast. — (1) The fees to be paid in respect of the grant of patents and
the registration of designs, and applications therefor, and in respect of other
matters with relation to patents and designs under the Act, shall be those
specified in the First Schedule to these rules, hereinafter referred to as the
prescribed fees:
Provided that no fees shall be payable in respect of any secret patent,
and every such patent notwithstanding the non-payment of such fees shall remain
in force for the full period of 16 years from its date.
(2) Fees may be paid! in cash at the Office, or may be sent by money
order or postal order or cheque payable to the Controller at Calcutta. Cheques
not carrying the correct addition for commission, and other cheques on which
the full value cannot be collected in cash within the time allowed 1 for payment
of the fee. shall be accepted only at the discretion of the Controller. Stamps shall
not be received iu payment of fees.
[Compare Rules 3, 58 to 60, and 101 of the English Patents Rules, 1932.]
6. Forms. — The forms set forth in the Second Schedule, with such
variations ps the circumstances of each case require, shall be used for the
respective purposes therein mentioned, and if used, shall be sufficient:
Provided that the Controller may, if he thinks fit, dispense with the use
of Form 4 iu the case of an application for extension of time under sub-section
(2) of section 14 of the Act.
[Compare Rules 4 and 9 of the English Patents Rules, 1932.]
7. Size, lh,, Of doeumeittt. — (1) All documents and copies of documents,
except drawings, sent to or left at the Office or otherwise furnished to the
Controller, shall be written, typewritten, lithographed, or printed in the English
language (unless otherwise directed), in large and legible characters with deep
permanent ink upon one side only of strong white paper of a size of approxi-
mately 13 inches by 8 inches, with a margin of at least one inch and a half on
the left-hand part thereof. Signatures thereto shall be written in a large and
legible hand, and a vernacular signature shall be accompanied by a transliteration
in English.
(2) Duplicate documents shall be filed at the Office, if at any time
required by the Controller.
(3) Names and addresses of applicants and other persons shall be given
in full, together with their nationality and such other particulars, if any, of
caste or calling as are necessary for identification.
[Compare Rule 5 of the English Patents Rules, 1932.]
8. Signature and verification of tfooumente specified In section 75 of the
Act.— The documents specified in section 75 of the Act shall be dated and signed
APPENDIX V
1099
at the foot, and shall contain a statement that the facte and matters stated
therein are true to the best of the knowledge, information and belief of the
person signing them.
[Compare Rule 8 of the English Patents Rules, 1832.]
9. Agency. For all matters falling under the provisions of section 76
of the Act, any person may, unless otherwise directed by the Controller,
authorise, under his personal signature, any other person to act as his agent and
to receive all notices, requisitions and communications. The authority may be
given on Form 31.
[Compare Rule 8 of the English Patents Rules, 1932.]
CHAPTER II.
PATENTS.
Applications for Qrant of Patent!.
10. Application. — (1) If the true and first inventor or any applicant for
a patent is in the service of the Crown, he shall disclose that fact in the applica-
tion and shall state the office which he holds.
(2) If the true and first inventor is not a party to ail application for a
patent, the applicant shall, except in the case of reciprocity applications, pro-
duce the original deed of assignment or other document from such true and first
inventor, under which he is enabled to apply for a patent, unless the application
itself is endorsed by the true and first inventor in the presence of two witnesses
with a statement that the suid inventor agrees that the application shall be made
without his name as an applicant for a patent.
(3) If an application for a patent is made by the legal representative
of a deceased inventor, the legal representative shall produce for inspection the
probate of the will or the letters of administration of the estate of the inventor
or a certified copy of such probate or letters, or such other evidence of his title
as the Controller may require.
[Compare Rules 9, 10 and 12—13 of the English Patents Rules, 1932. J
11. RMiproolty application. — (1) Every reciprocity application shall
contain a declaration that a British application has been made for protection of the
invention to which such reciprocity application relates, and shull specify every
part of His Majesty’s dominions and every State in India in which any such
British application has been made and the official date or dates thereof, respective-
ly. The application shall be made within twelve months from the date of the first
British application, and shall be signed by the person by whom such first British
application was made or by his legal representative or assignee or by an agent
resident in British India authorised in that behalf.
(2) If a reciprocity application is made by an assignee of the person
who made the British application the applicant shall produce the original deed
of assignment or other document from such person, under which he is enabled to
apply for a patent, unless the application itself is endorsed in the presence of
two witnesses by the person who made the British application with a statement
to the effect that the applicant is his assignee.
(3) If a reciprocity application is made by the legal representative of
a deceased person who made the British application, the legal representative shall
produce for inspection the probate of the will or the letters of administration of
1100
THE LAW OF PATENTS IN INDIA
the estate of the deceased person or a certified copy of such probate or letters,
or such other evidence of his title as the Controller may require.
(4) In addition to the specification left with every reciprocity applica-
tion, a copy or copies of the specification or specifications, and drawings or docu-
ments filed or deposited by the applicant or his predecessor in title, as the case
may be, in respect of the first British application, duly certified by the official
chief or head of the Patent Office in which they were filed or deposited, or other-
wise verified to the satisfaction of the Controller, shall be left at the Office at the
same time as the reciprocity application or within such further time, not exceed-
ing three months, as the Controller may allow.
(5) If any specification or other document relating to the application
is in a foreign language, a translation thereof shall be annexed thereto and shall
he verified to the satisfaction of the Controller.
(6) Save as aforesaid and as provided by Rule 50, all proceedings in
connection with a reciprocity application shall be taken within the time and in
the manner required by the Act or prescribed by these rules for ordinary applica-
tions.
[Compare Rules 14 — 17 of the English Patents Rules, 1932.]
12. Order of recording applications. — Applications shall, on receipt by the
Controller, he numbered in the order of their receipt.
[Compare Rule 11 of the English Patents Rules, 1932. |
SPECIFICATIONS.
13. Specification. — (1) The specification shall commence with the title of
the invention and the name of the applicant as in the application. It shall termi-
nate with a clear and succinct statement of the invention claimed, distinct from
the body of the specification, and claims shall he signed and dated by the appli-
cant or his agent.
(2) The specification in respect of a patent of addition shall contain a
specific reference to the number of the main patent, nnd a definite statement that
the invention comprises an improvement in, or a modification of, the invention
claimed in the specification of the main patent.
(3) Wher^j the invention is capable of representation by drawings, such
drawings shall he prepared in accordance with Rules 15 to 18 and shall be sup-
plied with, and referred to in detail in, the specification.
(4) Irrelevant or other matter, not necessary, in the opinion of the Con-
troller, for elucidation of the invention, shall he excluded from the title, descrip-
tion, claims and drawings.
[Regarding claims, Rule 13 of the English Patents Rules, 1932. J
14. Amendments how to be made. — (1) When the specification, or any
drawing accompanying it, is defective and requires amendment, one copy shall
be returned to the applicant or his agent and all alterations shall be made there-
on as far as possible. Additional matter inay be interpolated, if necessary, by
rewriting such pages as are required to form a continuous document. Amend-
ments shall not be made by slips pasted on, or as footnotes, or by writing in
the margin.
(2) The amended documents shall be returned to the Controller together
with the superseded pages or drawings, if any, duly marked, cancelled and
initialled by the applicant or his agent, and with a duplicate of any pages that
have been retyped or added and of any drawings that have been added or
APPENDIX V
1101
substantially amended. Amendments, alterations or additions shall be initialled in
the margin by the applicant or his agent.
(3) No amendments, alterations or additions shall be made in a docu-
ment returned for amendment, beyond those necessary to comply with the
requirements of the Controller.
15. General. — (1) Drawings, when furnished, shall accompany the specifi-
cation to which they refer. No drawing or sketch, such as would require the
preparation for the printer of a special illustration for use in the letter-press of
the specification when printed, shall appear in the specification itself.
(2) Drawings shall be delivered flat or so rolled as to he free front
creases.
(3) At least one copy of the drawings shall be suitable for reproduction,
and for that purpose, shall be prepared on tracing cloth or on smooth white paper
which is not opaque.
16. Size of drawing! end arrangement of figures.— (l) Drawings shall he
on sheets which measure 13 inches from top to bottom and are either from 8
inches to 8£ inches or from 16 inches to 16£ inches wide, the narrower sheets
being preferable. A clear margin shall be left half an inch from the edges of
the sheet.
(2) If there are more figures than can he shown on one of the smaller
sized sheets, two or more of these sheets shall he used in preference to employing
the larger size. When an exceptionally large figure is required, it shall he con-
tinued on subsequent sheets, of which any number that are required but. not
more than are required, may he employed. The figures shall he numbered con-
secutively throughout and without regard to the number of sheets. They shall
he separated by a sufficient space to keep them distinct.
17. Drawings to be suitable for reproduction. Drawings shall he prepared
in accordance with the following requirements:- -
(a) They shall he executed with absolutely black ink.
(b) Each line shall he firmly and evenly drawn, sharply defined and
of the same strength throughout.
(#•) Section lines, lines for effect, and shading lines shall he as few as
possible, and shall not he closely drawn.
(d) Shading lines shall not contrast too much in thickness with the
general lines of the drawings.
(?) Sections and shading shall not he represented by solid black or
washes.
( f ) They shall he on a scale sufficiently large to show the inventions
clearly, and only so much of the apparatus, machine, etc., shall
appear as effects this purpose, if the scale is given, it shall he
drawn and not denoted by words. No dimensions shall be mark-
ed on the drawings.
(tf) The figures shull be drawn in an upright position in regard to the
top and bottom of the sheet.
(A) Reference letters and numerals, and index letters and numerals used
in conjunction therewith, shall he hold 1 , distinct and not less than
one-eighth of an inch in height. The same letters or numerals
shall be used to indicate the same parts in different views. Where
the reference letters or numerals are shown outside the figure,
they shall be connected by fine lines with the parts to which
they refer.
1102
THE LAW OF PATENTS IN INDIA
18. Drawings to boar nams of applisant, ate., but no dassfiptlva matter.—
(1) Drawings shall bear: —
(t) in the left hand top corner, the name of the applicant and the
words “ No. of 19 ” ;
(it) in the right hand top corner, the number of the sheets of draw-
ings sent and a consecutive number of each sheet;
(Hi) in the right hand bottom corner, the signature of the applicant
or his agent.
(2) Neither the title of the invention nor any descriptive matter shall
appear on drawings.
[Regarding Rules 15 — 18 above, compare Rules 18—25 of the English Patents
Rules, 1932. ]
19. The Controller shall advertise the acceptance of every application in
the 11 Gazette of India."
[Compare Rule 40 of the English Patents Rules, 1932.]
OPPOSITIONS TO GRANT OR AMENDMENT, ETC.
20. Not lee of Opposition • — Notice of opposition to the grant, or to the
amendment, etc., of a patent shall be given in duplicate. One copy of the notice
shall be sent by the Controller to the applicant or his agent.
21. Filing of statements. — (1) Within 14 days of giving notice of opposi-
tion, the opponent shall leave at the Office a full written statement in duplicate,
setting out fully the nature of the opponent’s interests, the facts upon which he
bases his case and the relief which he seeks.
(2) The Controller shall furnish the applicant or his agent with one
copy of the statement referred to in sub-rule (1). and the applicant or his agent
may leave at the Office a reply in writing within a time to be specified by the
Controller. Such reply shall deal in full with the statement of the opponent and
shall be in duplicate.
(3) If the reply referred to in sub-rule (2) is supplied by the applicant,
the Controller shall furnish the opponent or his agent with one copy thereof, and
the opponent or his agent may again leave at the Office a rejoinder in writing
within a time to4?e specified by the Controller. Such rejoinder shall be confined
strictly to matters in the reply, and shall be in duplicate. One copy of the
rejoinder shall be sent by the Controller to the applicant or his agent.
(4) The Controller may require at any time that any written statement,
reply or rejoinder shall be in the form of an affidavit.
(5) The time allowed for filing a reply or rejoinder shall ordinarily be
one month.
[Compare Rules 43 aud 44 of the English Patents Rules, 1932.]
22. Hairing. — (1) On completion of these proceedings or at such other
time as he may see fit, the Controller shall appoint a time for the hearing of
the case, and shall give the parties not less than ten days’ notice of such hearing.
(2) If either party desires to be heard, he shall leave Form 7 at the Office.
(3) The Controller may refuse to hear any party who has not left Form
7 prior to the date of hearing.
(4) If either party intends to refer at the hearing to any publication
other than a specification already mentioned in the proceedings, he shall give
to the other party and to the Controller not less than five days’ notice of his
intention, together with details of each publication to* which he intends to refer.
APPENDIX V
1103
(5) After hearing the party or parties desirous of being heard, or if
neither party desires to be heard, then without a hearing, the Controller shall
decide the case and notify his decision to the parties.
[Compare Rule 40 of the English Patents Rules, 1032. J
SEALING.
23. Staling.-- (1) If an applicant desires to have a patent sealed on his
application, he shall, within the period allowed by sub-section (2) of section 10
of the Act, leave at the Office an application on Form 8.
(2) Where for any reason a patent cannot be sealed within the period
allowed, the applicant may apply to the Controller for an extension of the
period not exceeding three months. An application for sue!) an extension shall
be accompanied by a fee of Rs. 10, Rs. 20 or Rs. 30 for an extension of one, two or
three months, respectively.
[Compare Rules 51 — 53 of the English Patents Rules, 1932.]
24. Form of patent.— The patent shall be in the form given in the Third
Schedule to these rules, with such modifications as the circumstances of each
case may require.
[Compare Rules 55 — 57 of the English Patents Rules, 1932.]
EXTEN8ION.
25. Extension of torm of patent. — (1) A petition for the extension of the
term of a patent shall set forth clearly the nature and merits of the invention in
relation to the public, the profits made by the patentee as such and all the
circumstances of the case.
(2) The Controller shall advertise every such petition in the “ Gazette
of India.'*
(3) Every such advertisement shall state the object of the petition and
the address within British India for service on the patentee of any document
requiring service under this rule. It shull also specify that notices of objections
shall be lodged on Form 6 within two months from the date of the notification.
(4) Every such petition shall also be advertised by the patentee, in not
less than two newspapers named by the Controller, within 14 days from the date
of the notification in the Gazette and in the manner described in sub- rule (3).
Copies of the newspapers containing these advertisements shall be supplied to the
Controller.
(5) The petitioner shall, within three weeks of filing the petition, lodge
a duplicate of the petition with two copies of the balunce sheet of expenditure
and receipts relating to the patent in question, which accounts shall be proved
on oath. He shall also, upon receiving two days* notice, give the Controller
or any person deputed by him for the purpose, reasonable facilities for inspecting
and taking extracts from the books of accounts, by reference to which he proposes
to verify the said balance sheet or from which the materials for making up the
said balance sheet have been derived.
(6) Any person desirous of opposing the prayer of the petition shall
lodge with the Controller a notice on Form 6 accompanied by a fee of Rs. 5.
Such person shall at the same time serve a copy of such notice upon the petitioner.
Such notices shall be lodged and served within two months from the date of the
notification of the petition in the “ Gazette of India."
1104
THE LAW OF PATENTS IN INDIA
(7) The petitioner shall, within one week of the receipt of such notice,
serve a copy of his petition upon euch person giving such notice.
(8) Every person giving such notice as aforesaid shall, within 14 days
from the service of the petition upon him, serve upon the petitioner one copy
and lodge with the Controller two copies of particulars of the objections upon
which he intends to rely against the granting of the prayer of the petition.
(9) Any person who shall not, within the said 14 days, lodge and serve
such particulars of objections as aforesaid shall be deemed to Have abandoned
his opposition.
(10) No person who has delivered such particulars of objections shall
be entitled to oppose the granting of the prayer of the petition on any grounds
not stated in such particulars.
(11) Any person who has delivered particulars of objections shall be
entitled, at his own expense, to obtain copies of the accounts which have been
lodged by the petitioner.
(12) The Controller may excuse petitioners and opponents from com-
pliance with any of the requirements of sub-rules (5). (7), (8) and (10) and may
give such directions in matters of procedure and practice as he shall consider to
be just and expedient.
(13) Service of any document requiring service under this rule may be
made by enclosing such document in a prepaid registered letter and posting
such letter to the person required to be served at his address for service.
(14) On completion of these proceedings, if any, or at such other time
as he may see fit, the Controller shall forward one copy of the documents left
by the party or panties to the Govenior-Geueral-in -Council through the Secretary
iu the Department of Industries and Labour.
RESTORATION.
26. Restoration of lapsed patent. If the Controller entertains an applica-
tion under section 16 of the Act for the restoration of a lapsed patent, he shall
advertise it in the “ Gazette of India.”
27. Opposition. Notice of opposition to the restoration may be given
within six weeks of the advertisement, ami the procedure for the disposal of
such opposition shall be regulated by the provisions of Rules 20, 21 and 22.
[Regarding Rules 26 and 27 above, compare Rules 61-64 of the English
Patents Rules, 1932. J
28. Conditions on Restoration. (1) III every Older of the Controllei
restoring a patent, provisions shall be inserted for restraining the patentee from
commencing or prosecuting any action or other proceeding, and from recovering
damage —
(ri) in respect of makiug, selling or using the invention, or
(6) in respect of selling or using at any time thereafter any article made,
iu infringement of the patent between the date of the lapsing of
the patent and the date of the order of restoration.
(2) The order shall further provide that if any person within one year
after the date thereof makes ail application to the Controller for compensation ■
in respect of money, time, or labour expended by the applicant upon the subject
matter of the patent, in the bona fide belief that such patent had become and
continued to be void, it shall be lawful for the Controller, after hearing the
parties concerned, and subject to an appeal to the Governor-General-in-Council,
to assess the amount of such compensation, if in his opinion the application
APPENDIX V 1105
ought to be granted, and to specify the party by whom and the day on whieli
such compensation shall be paid; and if default shall be made in payment of the
sum awarded, then the said patent shall become void, but the sum awarded shall
not in that case be recoverable us a debt or damages.
[Compare Rules 65 aud 66 of the English Patents Rules, 1932. J
AMENDMENT OF APPLICATION OR SPECIFICATION.
29. Amendment. — A request under section 17 of the Act for the amend-
meut of an application, or a specification including drawings shall be accompanied
by a copy of the application, specification, or drawings showing in red ink the
proposed amendment in such a manner as to indicate clearly the alteration
desired.
30. Procedure when application for a patent hat bean accepted.— if the
request relates to an application for a patent which has been accepted, the
request and the nature of the proposed amendment shall he advertised by notifica-
tion in the ” Cassette of India *' and in such other manner, if any. as the
Controller may in each case direct. The Controller shall also notify all persons
whose names, at the time of the request, are entered oil the register us claiming an
interest in the patent.
31. Opposition.— Rules 20, 21 and 22 shall he applicable to the disposal uf
any opposition to the amendment, of which notice may he given in accordance
with sub-section (3) of section 17 of the Act.
[Regarding Rules 29-31 above, compare Rules 67 — 69 and Rules 72 — 73 of
the English Patents Rules, 1932. j
32. Requirements on amendment. -(1) Where leuve to amend is given,
the applicant shall, if the Controller so requires, and within u time to be specified
by him, leave at the Office a new specification and umended drawings which shall
he prepared in the manner prescribed in Rules 15 to 18.
(2) Amendments allowed by the Controller, after an application for a
patent has been accepted, shall he advertised by him in the “ Gazette of India.”
[Compare Rules 70 and 71 of the English Patents Rules, 1932. J
SURRENDER.
33. Surrender off patents. — (1) If un offer is made for the surrender of a
patent under section 24 of the Act, the Controller shall advertise it in the “ Gazette
of India ” and shall notify nil persons whose names, at the time of the offer, are
entered on the register as claiming an interest in the patent.
(2) Notice of opposition to the revocation of a (mtent offered for sur-
render shall be given within six weeks of the advertisement, and the procedure
for the disposal of such opposition shall be regulated by the provisions of
Rules 20, 21 and 22.
[Compare Rule 83 of the English Patents Rules, 1932. J
139
life
tfUfc LAW OP 1 ’AtEtfTg IN INMA
CHAPTER III.
Designs.
t N.B.— Rules 34 to 48 comprising Chapter III, since they relate exclusively to
Designs , have been here omitted.]
CHAPTER IV.
General.
REGISTER OF PATENTS AND DESIGN8.
49. Entry Of grant.'— Upon the sealing of a patent, tin* Controller shall
cause to be entered in the Register of Patents the mime, address and nationality
of the patentee as the grantee thereof, the title of the invention, the date of the
patent, and the date of the grant thereof, together with the address for service.
[Compare Rule 93 of the English Pateuts Rules, 1932.]
50. Entry in raspaot of reciprocity application.— The patent granted on
any reciprocity application shall be entered in the register as dated of the official
date of the first British application in respect of which the reciprocity application
was made, and the payment of renewal fees and the expiration of the [»ateut shall
be reckoned as from that date. The date of the reciprocity application shall also
be entered in the register. ,
[Compare Rule 94 of the English Patents Rules, 1932.]
51. Entry Of renewal fOO. Upon payment of the fee prescribed for the
continuance of a patent, the Controller shall cause to be eutered in the Register
of Patents a record of the date of payment of such fee.
tCompare Rule 101 of the English Patents Rules, 1932. )
52. Registering designs. — When a design is accepted, there shall he
entered in the Register of Designs, in addition to the particulars required by the
Act, the number of the design, the class in which it is registered, the date of
filing the application for registration in this country, the reciprocity date, if
any, claimed for tile registration, and such other matters as would affect the
validity or proprietorship of the design.
53. Altsration Of address. If a patentee or a proprietor of a registered
design sends to the Controller notice in respect of an alteration in his name, or
address, or addresses for service, the Controller shall cause the register to be
altered accordingly.
[Compare Rule 95 of the English Patents Rules, 1932. J
54. Application for entry of subsequent proprietorship.— Where a person
becomes entitled, by assignment, transmission, or other operation of law, to a
patent, or to a copyright iu a registered design, or to any interest therein, as
mortgagee or licensee, application shall be made to the Controller for the entry
in the register, of his name as proprietor or part proprietor of the patent, or
design, or of a notice of such interest, as the case muy be.
55. Fartieulars in epplleetions.— All application under Rule 54 shall coutain
the name, address and nationality of the person claiming to be entitled, together
with full particulars of the instrument, if any, under which he claims.
[Regarding Rules 54 and 55 above, compare Rule 96 of the English Pateuts
Rules, 1932.]
APPENDIX V
1107
66. Produotlon of tfooumonta of titlo and other proof. — Every assignment,
and every other document containing, giving effect to or being evidence of the
transmission of a patent or of copyright in a registered design or affecting the
proprietorship thereof as claimed by such application, shall, unless the Controller
otherwise directs, be presented to him together with the application, and he
may call for such other proof of title or written consent as he may require for
his satisfaction :
Provided that in the case of a document which is a public document an
official or certified copy thereof may be presented.
[Compare Rule 97 of the English Patents Rules, 1932.]
57. Form of ontry. — The entry to be made in the registers on a request
under Rule 54 shall be in the following form:- •
“ In pursuance of an application received on the ,
registered as
dated -
prop rietor s
licensees
mortga gees
etc.
by virtue of
and made between
assignment
licence
mortgage deed
etc.
of the one part and of the other
part."
58. Entry of notification of documents.— An application for entry in the
registers of notification of any document (not. already provided for), purporting
to affect the. proprietorship of a patent, or of a registered design, shall be
accompanied by an attested copy of the document, the accuracy of such copy
being certified as the Controller may direct, and the original document shall at
the same time be produced and left at the Office if required for further verification.
[Compare Rule 100 of the English Patents Rules. 1932. J
59. Hours of inspeotion of registers.— The Registers of Patents and
Designs shall ho open to the inspection of the public at all times on which the
Office is open to the public, except at times when they are required for actual
official use.
60. RSStifieatiOil of registers.— If an application is made for (he rectifica-
tion of the Register of Patents ur Designs nnder section 64 of the Act, the
Controller shall notify .all persons whose names, at- the time of (he application,
are entered on the register as claiming an interest in the patent or design, and
shall advertise the application in the “ Gazette of India.”
61. Opposition to restifloation. — Notice, of opposition to any rectification
of the Register of Patents or the Register of Designs may be given within six
weeks of the advertisement of the application for rectification and the procedure
for the disposal of such opposition shall be regulated by the provisions of
Rules 20, 21 and 22.
APPEALS.
62. Appeals to the Governor-General-in-Couneil. (i) An appeal to the
Governor-General- in-Council under any provision of the Act from a decision of
the Controller shall he lodged with the Controller in duplicate and shall state
fully the reasons for appealing.
(2) The. Controller shall forward one copy of the appeal to the Governor-
General-in-Council, who shall notify the appellant of its receipt.
1108
THE LAW OF PATENTS IN INDIA
(3) In appeals under sections 9, 10 (1A) , 16 And 17 of the Act. the
Governor-General-in-Council may either dismiss the appeal summarily or call
upon the appellant or his agent to serve a copy of the appeal on the respondent
nr his agent.
(4) When so required by the Governor-General-in-Council, the appellant
or his agent shall forthwith furnish the respondent or his agent with n copy of
the appeal and intimate to the Controller the date of supply of the copy.
(5) If a copy of the appeal is supplied to the respondent or his agent,
the respondent or his agent may leave at the Office a reply in writing within one
month of the date of receipt of a copy of the appeal. Every such reply shall
deal in full with the statement of the appeal, and shall be in triplicate.
(6) If a reply is supplied under sub-rule (5), the Controller shall furnish
the appellant or his agent with one copy thereof and forward one copy to the
Governor-General-in-Council.
(7) After considering the appeal and the reply, if any, the Governor-
General-in-Council may either allow the appeal or call upon the appellant or
his agent to furnish a rejoinder and, if so called upon, the appellant or his agent
shall leave at the Office a rejoinder in writing within one month of the date of
such requisition. The rejoinder shall be confined 1 strictly to matters in reply
and shall be in triplicate. One copy of the rejoinder shall be sent by the
Controller to the respondent or his agent and one copy to the Governor-General-
iu-Council.
(8) On completion of these proceedings, if any, or at such other time
ns he may see fit, the Oovernor-General-in-Couticil shall consider the appeal
together with the reply and the rejoinder, if any. and decide the case. The
decision of the Governor-General-in-Council shall be communicated to the
Controller and to the parties or their agents.
CERTIFICATES.
63. Certified copies of documents.— Certified copies of any entry in the
registers or certified copies of, or extracts from patents, specifications, disclaimers,
affidavits, declarations and other public documents in the Office, or of or from
registers and other books kept there, shall be furnished by the Controller on
payment of the prescribed fee.
[Compure Rule 104, also Rule 105, of the English Patents Rules. 1932. j
MISCELLANEOUS POWERS OF THE CONTROLLER.
64. Exercise of discretionary power of Controller.— The time within which
a person entitled under section 67 of the Act to an opportunity of being heard
shall exercise his option of requiring to be heard shall be one month from the
date of a notice which the Controller shall give to such person or his agent
before determining the matter with reference to which such person is entitled to
be heard. If within that month such person or his agent requires to be heard,
the Controller shall appoint a date for the hearing and shall give ten days' notice
thereof :
Provided tlwt if the giving of ten days’ notice would cause an applica-
tion for a patent or for the registration of a design to become void before the
hearing the Controller may curtail the period of notice.
[Compare Rules 112 find 113 of the English Patents Rules, 1932 . }
APPENDIX V
1109
65. Controller may require etatement.— Whether an applicant or agent
desires to be heard or not, the Controller nmy at any time require him to submit
a statement in writing within a time to be notified by the Controller, or to
attend before him and make explanations with respect to such matters us the
Controller may require.
[Compare Rule 114 of the English Patents Rules, 1932.]
66. General powers of amendment. -Any document for the amending of
which no special provision is made by the Act may be amended, mid any
irregularity in procedure which, in the opinion of the Controller, may be obviated
without detriment to the interests of any person, may be corrected if the
Controller thinks fit, and upon such terms as be may direct.
[Compare Rule 118 of the English Patents Rules, 1932. J
67. General power to enlarge time. — The time prescribed by these rules
for doing any act or taking any proceeding thereunder may he enlarged by I lie
Controller, if he thinks fit, and upon such terms as he may direct,
[Compare Rule 119 of the English Patents Rules, 1932. |
REPEAL.
68. Repeal. — (1) The Indian Patents and Designs Rules, 1912, are hereby
superseded, provided that any application or other matter pending under those
rules on the date of the coming into force of these rules shall be disposed of
under those rules.
(2) The notifications of the (loveniment of Tndia in the Department of
Industries and Labour. No. A197, dated the 17th July, 1930. and the 4th Novem-
ber, 1932. are hereby superseded.
I Compare Rule 124 of the English Patents Rules, 1932. J
THE FIRST SCHEDULE.
(See Seetfon 57.)
FEES.
Number of
entry.
On what payable.
Number of
form.
Proper
fee.
1
2
On application for a patent under Sec-
turn 3, 15 A, or 78 A.
On application for extension of time for
filing documents under Rule 11
One month . .
1, 1A, 1R, 1C,
1 AC, IRC,
ICC, 2, 2A,
2C, 2AC.
4
Rs. A. P.
10 0 0
io”o o
Two months
20 0 0
Three months
—
30 0 0
3
On application for extension of time to
accept application under Section 5 ( /) .
4
20 0 0
4
On notice of opposition under Section
9 (7)
6
5 0 0
1110
THE LAW OF PATENTS IN INDIA
Number of
entry.
On what payable.
Number of Proper
form. fee.
5 On notice of intention to attend hearing Ra. A. P.
under Section 9 ( 2 ). By applicant
and opponent respectively . . 7 10 0 0
6 On request for sealing under Section
10 (/) .. 8 30 0 0
7 On notice of intention to attend hearing
under Section 10 ( lA ) by each party.
8 On application for extension of time
under Section 10 ( 2 ) (d)
One month . .
Two months
Three months
9 For renewal under Section 14 —
(a) In respect of patents the application
for which zvas made before the 1 st
July JQ30.
Before expiration of 4th year in respect
of the 5th year
Before expiration of 5th year in respect
of the 6th year . .
Before expiration of 6th year in respect
of the 7th year
Before expiration of 7th year in respect
of the 8th year
Before expiration of 8th year in respect
of t(ie 9tli year
Before expiration of 9th year in respect
of the 10th year
Before expiration of 10t h year in respect
of the 11th year
Before expiration of 11th year in respect
of the 12th year
Before expirat ion of 12th year in respect
of the 13th year
Before expiratiqn of 13th year in respect
of the 14th year
Before expirat ion of 14th year in respect
of the 15th year
Before expiration of 15th year in respect
of the 16th year
10 0 0
10**6 0
20 0 0
30 0 0
50 0 0
50 0 0
50 0 0
50 0 0
50 0 0
100 0 0
100 0 0
100 0 0
100 0 0
100 0 0
150 0 0
150 0 0
AU’ENdIx V
till
Number of
entry.
On wlmt payable.
Number of
form.
Proper
fee.
For renewal under Section 14 — contd.
Bs. A. P.
(b) In respect of patents the application
for which tvas made on or after the
ist July 1930 .
Before expiration of 4th year in reaped
of tbe 5tli year
50 0 0
Before expiration of 5th year in reaped
of the 6th year
50 0 0
Before expiration of 6lh year in respect
of the 7th year
50 0 0
Before expiration of 7th year ill respect
of the 8th year
50 0 0
Before expiration of 8t h year in reaped
of the 9th year .. . .
100 0 0
Before expiration of 9th year in respect
of the 10th year
100 0 0
Before expiration of lOth year in resped
of the lllli year
100 0 0
Before expiration of lit ii year in respect
of the 12th year
1
....
J00 0 0
Before expiration of 12th year in respect
of the 15th year
150 0 0
Before expiration of 13th year in respect
of the 14th year
J50 0 0
Before expiration of 14lh year in reaped
of the 15th year
150 0 0
Before expiration of 15th year in respect
of the 16th year
Note — The fees for two or more years
may be paid in advance .
150 0 0
10
On application for extension of time for
payment of renewal fees under Set;
tion 14 U)
4
• • • •
One month
....
10 0 0
Two months
....
20 0 0
Three months
....
30 0 0
11
On petition for extension of term of
patent under 8ection 15
9
50 0 0
1112
THE LAW OF PATENTS IN INDIA
Number of
entry.
On what payable.
Number of
form.
Proper
fee.
12
On notice of opposition to extension
of term of patent under Section
15 (*)
6
Rs.
5
A.
0
p.
0
13
On certificate of renewal in respect of
each year, on patents extended or a
new patent granted under Section 15.
150
0
0
14
On application for restoration of lapsed
patents under Section 16
10
100
0
0
15
On notice of opposition to restoration
under Section 16
6
5
0
0
16
On notice of intention to attend bear-
ing under Section 16. By applicant
and opponent respectively
7
10
0
0
17
On application to amend under Section
17
11
, .
, ,
Before accepts lice
—
10
0
0
After acceptance
—
20
0
0
18
On notice of opposition to amendment
under Section 17 (j) .
6
5
0
0
19
On notice of intention to attend
bearing under Section 17 ( 4 ). By
applicant and opponent, respectively.
7
10
0
0
20
On petition for compulsory licence or
revocation under Sections 22 and 25.
10
0
0
21
On offer to surrender a patent under
Se^ion 24
12
10
0
0
22
O 11 notice of opposition to the surrender
of a patent under Buie 33
6
5
0
0
23
On notice of intention to attend
bearing under Section 24. By appli-
cant and opponent respectively
7
10
0
0
24
For duplicate of a patent under Sec-
tion 39
13
10
0
0
25
On notice to Controller of intended
exhibition of an invention or design
under Section 40 or 52
14
5
0
c
26
On request to register design under
Section 43 or 78A
15, 16
. .
• •
In Classes 1 to 12
• • • •
3
0
0
In Classes 13 and 14 . .
....
0
8
0
APPENDIX V
1113
Number of
entry.
On what payable.
Number of
form.
Proper
fee.
27
On request to register design under
Rs. A. I*.
Section 43 to be applied to a set in n
Class . . . .
17
3 0 0
28
On request for written decision under
Rule 41
18
5 0 0
29
On request to extend copyright under
Section 47
19
10 0 0
30
Note. —This fee may be paid in advance.
On request to inspect under Section 50.
10 0
31
On request for information under
Section 51 when registration number
is supplied
20
2 0 0
32
On request for information under
Section 51 when registration number
is not supplied
21
10 0 0
33
On request for inspection of the register
under Section 59
. • • •
1 0 0
34
On request for certificate under Sec-
tion 59
29
5 0 0
35
An additional fee of 1 anna for every
100 words or part thereof will be
charged for preparing copies of
specifications, etc. Drawings will be
charged according to agreement.
For office copies of drawings
(cost accord-
36
For certifying office copies, MSS. or
printed, each
ing to agree-
ment).
2 0 0
37
For office copy of design
....
(cost accord-
38
On request to correct under Section 62.
i
28
ing to agree-
ment ) . .
5 0 0
39
On application to the Controller for
cancellation of registration of design
under Section 51 A
22
5 0 0
40
On notice of intention to attend
hearing under Rule 48 ..
7
10 0 0
140
1114
THE LAW OF PATENTS IN INDIA
Number of
entry.
On what payable.
Number of
form.
Proper
fee.
41
On application under Section 63 for
entry of name of subsequent pro-
prietor in the Register of Patents or
of Designs, if made within Bix months
from date of acquisition of proprietor-
ship or of the coming into force of
these Rules: —
25
Rb. A. P.
In respect of one patent or design . .
....
5 0 0
For each additional patent or design
....
2 0 0
42
On application under Section 63 for
entry of name of subsequent pro-
prietor in the Register of Patents or
of Designs, if made after expiration
; of six mouths from date of acquisi-
tion of proprietorship and the coming
into force of these Rules: —
25
In respect of one patent or design
....
20 0 0
For each additional patent or design
—
2 0 0
43
On application under Section 63 for entry
of notice of a mortgage or licence in
the Register of Patents or of Designs,
if made within six months from date
of acquisition of interest or the
coming into force of these Rules: —
26
In respect of one patent or design . .
5 0 0
For each additional patent or design
—
2 0 0
44
On application under Section 63 for
entry of notice of a mortgage or
licence in the Register of Patents or
of Designs, if made after expiration
of six months from date of acquisi-
tion of interest and the coming into
force of these Rules : —
26
In respect of one patent or design . .
—
20 0 0
For each additional patent or design
....
2 0 0
45
On application under Section 63 for
entry of notification of a document in
the Register of Patents or of Designs,
if made within six months from dale
of documents, the grant of the patent,
the registration of the design, or
the coming into force of these Rules : —
27
In respect of one patent or design . .
—
5 0 0
For each additional patent or design
....
2 0 0
APPENDIX V
1115
Number of
entry.
On wiiat payable.
Number of
form.
Proper
fee.
46
On application under Section 63 for
Rs. A. P.
entry of notificat ion of a document in
the Register of Patents or of Designs,
if made after expiration of Bix
months from date of document, the
grant of the patent, the registration
of the designs, and the coming into
force of these Rules : —
In respect of one patent or design
27
i
20 0 0
For each additional patent or design
2 0 0
47
On request to alter name, address or
address for service in Register under
Section 62
23
1 0 0
48
For entry of two addresses for service
in Register under Section 20 or 4b . .
24
2 0 0
49
On application fur rectification of
Register under Sec tion 64
30
10 0 0
50
On notice of opposition to the rectifica-
tion of the Register under Rule 61 . .
r,
5 0 0
51
On not ice of intention to attend hearing
under Rule 61. Ry applicant and
opponent respectively
7
10 0 0
52
On appeal from the Controller to the
Governor- General in Council under
Sections 5, 9, 10 ( iA), 16, 17,
43 or 69
5
30 0 0
1116
THE LAW OF PATENTS IN INDIA
THE SECOND SCHEDULE.
FORMS.
List of Form*.
Form No.
Section of the Act
Title.
1
3
Application for patent when inventor is a sole or
joint applicant.
1A
3
Application for patent by assignee or legal
representative of inventor.
IB
3
Application for patent for invention “ communicat-
ed” from abroad.
1C
15A
Application for patent of addition when inventor is
a sole or joint applicant.
1AC
15A
Application for patent of addition by assignee or
legal representative of inventor.
1BC
15A
Application for patent of addition for invention
“ communicated ” from abroad.
ICC
ISA
Application for second or subsequent patent of
addition.
2
78A
Application for patent under reciprocal arrange-
ment, by “ British ” applicant.
2A
78A
Application for patent under reciprocal arrange-
ment, by assignee or legal representative of
n British ” applicant.
2C
15 A, 78A
Application for patent of addition under reciprocal
arrangement, by " British ” applicant.
2AC
15\78A
Application for patent of addition under reciprocal
arrangement, by assignee or legal representative
of u British *' applicant.
3
4
5
4
5 (4), 10 U), 14
• (2), (Rule 11).
5, 9, 10 (iA), 16,
17, 43, 69.
Specification.
Application for extension of time.
Appeal.
6
9 (/), 15, 16, 17,
(Rule 25, 33 or
61).
Notice of opposition.
7
9 (*), 10 {iA), 16,
17, 24, (Rule 48
or 61).
Notice of intention to attend hearing.
8
10
Request for sealing.
APPENDIX V
1117
Form No.
Section of the Act.
Title.
9
15
Petition for extension of patent.
10
16
Application for restoration of patent.
11
17
Application to amend.
12
24
Offer to surrender patent.
13
39
Application for duplicate patent.
14
40, 52
Notice of intended exhibition.
15
43
Application for registration of design.
16
78A
Application for registration of design under
reciprocal arrangements.
17
43
Application for registration of design applicable
to a Bet.
18
(Rule 41).
Request for grounds of decision.
19
47
Application for extension of copyright.
20
51
Request for information when registration number
is furnished.
21
51
Request for information when registration number
iB not furnished.
22
51 A
Application to the Controller to cancel registration
of design.
23
62
Request to alter name or address or address for
service in Register.
24
20, 46
Request for entry of two addresses in Register.
25
63
Application for entry in Register.
26
63
Application for entry in Register.
27
20,63
(Rule 58).
Application for entry of notification of documents
in Register.
28
62
Request for correction.
29
59
(Rule 63).
Request for certificate.
30
64
Application for rectification of Register.
31
76
Power of authority to agent.
[ jV .£.— Copies of the numerous forms here given in this Second Schedule have
not been printed here, sinci actual forms as may be required are readily obtainable
from the Indian Patent ~Off ice on an application accompanied by a stamped and
addressed envelope . See also the Indian Patent Office Handbook t $th Edn. at page 6tf.]
1118
THE LAW OF PATENTS IN INDIA
THE THIRD 8CHEDULE.
Model Form of Patent.
GOVERNMENT OF INDIA.
The Patent Office.
No. of 19
Whereas—
hath declared that he is in possession of an invention for
and that he is the true and first inventor thereof (or the legal
representative or assign of the true and first inventor) and that the same is not
in use in British India by any other person to the best of his knowledge, informa-
tion and belief;
And whereas he hath humbly prayed that a patent might bo granted to him
for the said invention;
And whereas he hath by and in his specification (of which a printed copy is
hereunto annexed) particularly described and ascertained the nature of the inven-
tion and the manner in which the same is to be performed;
The Governor-General-in-Council is pleased to order by these presents that
the above said petitioner (including his legal representatives and assigns or any of
them) shall, subject to the provisions of the Indian Patents and Designs Act, 1911,
as patentee have the exclusive privilege of making, selling and using the invention
throughout British India (including British Baluchistan, the Santhal Parganas
and the Shan States) and of authorising others, so to do for the term of sixteen
years from the day of 19 , subject to the conditions
that the validity of this patent is not guaranteed by Government, and also provided
that the fees prescribed for the continuation of this patent are duly paid.
In witness whereof the Governor-General-in-Council has caused this putent
to be sealed as of the day of - - — - ■ -19 •
Signature of Controller,
Date of Sealing
Note . — Renewal fees will be due on this patent, if it is to be maintained, on
the day of 19 , and on the same day in each year thereafter.
THE FOURTH SCHEDULE.
Classification of Goods.
[AM?.— The contents of this Fourth Schedule comprising details of the
descriptions of the various clauses in which goods are to be registered for the
purpose of the Registration of Designs , since the Schedule relates exclusively to
Designs, have here been omitted .]
APPENDIX V
1119
INDIAN 8ECRET PATENT RULE8, 1933.
[ NS'— These rules were published in the " Gazette of India ” dated irth
February 1933 , Part II, There have been no amendments to these rules since that
date . The folloiving is accordingly the form in which these rules are current and
effective up to date (uc„ as on 31st October, 1936) >\
Notification No. A-197, dated the 3rd February 1033.— In exercise of the
powers conferred by clause (w) of sub-section (/) and by sub-section 2 A of
section 77 of the Indian Patents and Designs Act, 1911 (II of 1911). the Governor-
General-in-Council is pleased to make the following rules:—
1. Short title. — These rules may bo called the Indian Secret Patent Rules,
1933.
2. Definitions. — In these rules, unless there is anything repugnant in the
subject or context—
(а) “ Act ” means the Indian Patents and Designs Act, 1911;
(h) “ Controller " means the Controller of Patents and Designs
appointed under section 56 of the Act, and includes any officer
appointed to act for him;
(r) “Office*' means the Patent Office provided under section 55 of the
Act.
3. Secret patents. (1) When it has been decided by the Oovernor-Oeneral-
in-Council that, it is advisable to take out a secret, patent for any invention
assigned under section 21 A of the Act to the Secretary of State for India in
Council on behalf of His Majesty,- and an application for auch patent has been
made on Form ID annexed hereto accompanied by a certificate of the Governor-
General-in-Council under the said section, the Controller shall not communicate
the application or any documents relating thereto to any member of his staff other
than an examiner or examiners specially authorised by him in this behalf who shall
make the investigations required to be made under section 5 (/) of the Act in the
case of other applications for patents.
(2) Unless and until such invention is re assigned to the inventor by the
Secretary of State for India in Council:--
(») the application for the jKitent and the acceptance of the same Rhall
not be advertised, nor shall the grant of the patent for such
invention be open to opposition under section 9 of the Act; but
the Controller shall cause a patent, to be sealed in respect of every
such invention as soon as may be after the acceptance of the
application relating thereto;
(б) every such secret patent shall be registered in a confidential register
at the office and no details or particulars relating thereto shall at
any time be published as required by the Act in the case of
patents other than secret patents, nor shall any entry be made
in the ordinary Register of Patents in respect of any such secret
patent or any assignment thereof.
1120 THE LAW OF PATENTS IN INDIA
4. Ra-ftttlgftiliefit. — In the event of any secret patent being re-assigned to
the inventor by the Secretary of State for India in Council —
(a) an entry to that effect shall be made in the ordinary Register of *
Patents ns well as in the confidential Register of Patents;
(ft) all fees that would have been thereafter payable if the patent had
not been a secret patent shall be paid in respect thereof;
(r) the patent shall remain in force only for the same term, and subject
to the same conditions as to payments of fees and otherwise as
if it had not been a secret patent.
Form ID.
INDIAN PATENTS AND DESIGN8 ACT, 1911.
Applloatlon for a Secret Patent. Seetion 21 A.
(To be accompanied by the specification in duplicate on Form 3 prescribed by the
Indian Patents and Designs Rules, 1933, and a certificate under section 21A,)
I (or we)l
do hereby declare —
(I) that I am (or we are) in possession of an invention forZ
(II) that3 claim to be the true and first inventor
thereof ;
(III) that the invention is not in use in British India by any other
person ;
(IV) that the specification filed with this application is, and any
amended specification which may hereafter be filed in this behalf
will be true of the invention to which this application relates;
(V) ,that the facts and matters stated herein are true to the best of
my (or our) knowledge, information and belief.
I (or we) humbly pray that a secret- patent may be granted t-o me (or us)
for the said invention.
Dated this 4 day of 19——
(Signed) 4 -
To
THE CONTROLLER OF PATENTS AND DESIGNS,
1, Council House Street, Calcutta.
1 Insert (in full) name , address and nationality of applicant or applicants ,
1 Insert title of invention, *State who is or are the inventor or inventors, *To be
dated and signed by applicant or applicants,
[Regarding corresponding English Rules concerning secret patents, compare
Rules 106—106 of the English Patents Rules, 1932. J
APPENDIX VI.
INTERNATIONAL CONVENTION FOR THE PROTECTION OF
INDUSTRIAL PROPERTY
141
CONTENTS.
The International Convention for the Protection of Industial
Property
1 123
INTERNATIONAL CONVENTION FOR THE PROTECTION
OF INDUSTRIAL PROPERTY.
[Signed at the Hague, November 6, 1925. 1
Union Convention of Paris, March 20, 1883, for the Protection of Industrial
Property, revised at Brussels on December 14, 1900, at Washington on June 2,
1911, and at The Hague on November 6, 1925.
[British ratification deposited, May 1, 1928. )
(Translation from the French text.)
The President of the German Reich; the President of the Austrian Republic;
His Majesty the King of the Belgians; the President of the United States of Brazil;
the President of the Republic of Cuba; His Majesty the King of Denmark; the
President of the Dominican Republic; His Majesty the King of Spain; the President
of the Estonian Republic; the President of the United States of America; the
President of the Republic of Finland; the President of the French Republic; His
Majesty the King of the United Kingdom of Great Britain and Ireland and of
British dominions beyond the Seas, Emperor of India; His Serene Highness the
Governor of Hungary; His Majesty the King of Italy; His Majesty the Emperor
of Japan; His Majesty the Sultan of Morocco; the President of the United States
of Mexico; His Majesty the King of Norway; Her Majesty the Queen of die
Netherlands; the President of the Polish Republic, in the name of Poland and of
the Free City of Danzig; the President of the Portuguese Republic; His Majesty
the King of the Serbs, Croats and Slovenes; His Majesty the King of Sweden;
the Federal Council of the Swiss Confederation; the States of Syria and Grand
Lebanon; the President of the Czechoslovak Republic; His Highness the Bey of
Tunis; the President of the Turkish Republic,
Having deemed it expedient to make certain modifications in, and additions
to, the International Convention of the 20th March, 1883, for the creation of an
International Union for the Protection of Industrial Property, revised at Brussels
on the 14th December, 1900, and at Washington on the 2nd June, 1911, have
named as their Plenipotentiaries, that is to say:
[Here followed all the names of the several representatives of the countries
mentioned above.]
Who, after having communicated to each other their respective full powers,
found in good and due form, have agreed upon the following Articles: —
Article 1.
The contracting countries constitute themselves into a Union for the protection
of industrial property.
The protection of industrial property is concerned with patents, utility
models, industrial designs and models, trade marks, trade names and indications
of source or appellations of origin, and the repression of unfair competition.
Industrial property is to be understood in the broadest sense and applies not
only to industry and commerce properly so called, but likewise to agricultural
industries (wines, com, tobacco leaves, fruit, cattle, etc.) and extractive industries
(minerals, mineral waters, etc.).
Under the term “patents” are included the various kinds of industrial patents
recognised by the laws of the contracting countries, such as patents of importation,
patents of improvement, patents and certificates of addition, etc.
Article 2.
Persons within the jurisdiction of each of the contracting countries shall, as
regards the protection of industrial property, enjoy in all the other countries
1124
THE LAW OF PATENTS IN INDIA
of the Union the advantages that their respective laws now grant, or may here-
after grant, to their nationals, without prejudice to the rights specially provided
by the present Convention. Consequently they shall have the same protection as
the latter, and the same legal remedy against any infringement of their rights,
provided they observe the conditions 7 and formalities imposed on nationals.
Nevertheless, no condition as to the possession of a domicile or establishment
in the country where protection is claimed may be required of persons entitled to
the benefits of the Union for the enjoyment of any industrial property rights.
The provisions of the laws of each of the contracting countries relative to
judicial and administrative procedure and competence, and to the choice of
domicile or the authorisation of an agent which may be required by the laws of
industrial property, are expressly reserved.
Article 3.
Persons within the jurisdiction of countries not forming part of the Union,
who are domiciled or who have real and effective industrial or commercial
establishments in the territory of one of the countries of the Union, are assimilated
to persons within the jurisdiction of the contracting countries.
Article 4.
(a) Any person who has duly deposited an application for a (latent, or for
the registration of a utility model, industrial design or model or trade mark in
one of the contracting countries, or his legal representative or assignee, shall
enjoy, for the purposes of deposit in the other countries, and reserving the rights
of third parties, a right of priority during the periods hereinafter stated.
( b ) Consequently, a subsequent deposit in any of the other countries of the
Union before the expiration of these periods shall not be invalidated through any
acts accomplished in the interval, either, for instance, by another deposit, by
publication or exploitation of the invention, by the putting on sale of copies of
the design or model, or by use of the mark.
(c) The above-mentioned periods of priority shall be twelve months for
patents and utility models, and six months for industrial designs and models and
trade marks.
These periods start from the date of deposit of the first application in a
country of the Union; the day of deposit is not included in the period.
If the last day of the period is a dies non in the country where protection is
claimed, the period shall be extended until the first following working day.
( d ) Any person desiring to take advantage of the priority of a previous
deposit shall be bound to make a declaration giving particulars as to the date of
such deposit antithe country in which it was made. Each country will determine
for itself the latest time at which such declaration must be made.
These particulars shall be mentioned in the publications issued by the com-
petent authority, in particular on the patents and the specifications relating
thereto.
The contracting countries may require any person making a declaration of
priority to produce a copy of the application (with the specification, drawings, etc.)
previously deposited. The copy, certified as correct by the authority by whom
the application was received, shall not require any legal authentication, and may
in any case be deposited at any time within three months from the deposit of
the subsequent application. They may require it to be accompanied by a certi-
ficate from the proper authority showing the date of the deposit, and also by a
translation.
No other formalities may be required for the declaration of priority at the
time of depositing the application. Each of the contracting countries shall
decide for itself what cons^uences shall follow the omission of the formalities
prescribed by the present article, but such consequences shall in no case be more
serious than the loss of the right of priority.
Subsequently, further proof in support of the declaration may be required.
• (e) Where an application for the registration of an industrial design or
model is deposited in a country in virtue of a right of priority based on a previous
APPENDIX VI
1125
deposit of an application for registration of a utility model, the period of priority
shall only be that fixed for industrial designs and models.
Further, it is permissible to deposit in a country an application for the
registration of a utility model in virtue of a right or priority based on the
deposit of a patent application and vice versa.
(/) If an application for a patent contains multiple priority claims, or if
examination reveals that an application contains more than one invention, the
competent authority shall at least authorise the applicant to divide the application,
subject to such conditions as may be imposed by domestic legislation, and
preserving as the date of each part of the application the date of the initial
application and, if necessary, the benefit of the right of priority.
Article 4 bis.
Patents applied for in the various contracting countries by persons entitled
to the benefits of the Union shall be independent of the patents obtained for the
same invention in the other countries, whether members of the Union or not.
This stipulation must be strictly interpreted, for example, it shall be under-
stood to mean that patents applied for during the period of priority are
independent, in respect of the grounds for refusal and for revocation, as well
as in respect of their normal duration.
The stipulation applies to all patents existing at the time when it comes
into effect.
Similarly it shall apply, in the case of the accession of new countries, to
patents in existence, either on one side or the other, at the time of accession.
Article 5.
The importation by the patentee into the country where the patent has been
granted of articles manufactured in any of the countries of the Union shall not
entail revocation of the patent.
Nevertheless each of the contracting countries shall have the right to take
the necessary legislative measures to prevent the abuses which might result from
the exercise of the exclusive rights conferred by the patent, for example, failure
to work.
These measures shall not provide for the revocation of the patent unless
the grant of compulsory licences is insufficient to prevent such abuses.
In no case can the patent be made liable to such measures before the
expiration of at least three years from the date of grant of the patent and then
only if the patentee is unable to justify himself by legitimate reasons.
The protection of industrial designs and models may not, under
any circumstances, be liable to revocation by reason of the importation of articles
corresponding to those which are protected.
No sign or mention of registration shall be required on the goods in order
to maintain recognition of the rights given by such registration.
If, in any country, the utilisation of a registered trade mark is compulsory,
registration cannot be cancelled until after a reasonable period has elapsed, and
then only if the person, interested, G3PPqt justify the causes of his inaction.
Article 5 bis . ' '
An extension of time of not less than three months shall be allowed for the
payment of the prescribed fees for the maintenance of industrial property rights,
on condition (if the national legislation of a country so provides) of the payment
of a supplementary fee.
In the case of patents, the contracting countries further undertake, either to
increase the above-mentioned extension of time to not less than six months, or
to provide for the restoration of a patent which has expired by reason of the
non-payment of fees, subject in each case to the conditions prescribed by the
domestic legislation.
Article 5 ter.
In each of the contracting countries the following shall not be considered as
infringements of the rights of a patentee.
1. The use on board vessels of other countries of the Union of a patented
invention in the body of the vessel, in the machinery, tackle,
1126 THE LAW OF PATENTS IN INDIA
apparatus and other accessories, when such vessels penetrate tem-
porarily or accidentally into the territorial waters of the country,
provided that such invention is used exclusively for the actual needs
of the vessel.
2. The use of a patented invention in the construction or working of
aircraft or land vehicles of other countries of the Union, or of the
accessories to such aircraft or vehicles, when such aircraft or vehicles
penetrate temporarily or accidentally into the country.
Article 6.
Every trade mark duly registered in the country of origin shall be admitted
for deposit and protected in its original form in the other countries of the Union.
Nevertheless, registration of the following may be refused or cancelled: —
1. Marks which are of such a nature as to infringe rights acquired by
third parties in the country where protection is claimed.
2. Marks which have no distinctive character, or which consist
exclusively of signs or indications which serve in trade to designate
the kind, quality, quantity, destination, value, place of origin of the
goods or date of production, or which have become customary in
the current language, or in the bona fide and recognised customs
of the trade of the country where protection in claimed.
In arriving at a decision as to the distinctive character of a
mark, all the circumstances of the case must be taken into account,
including the length of time during which the mark has been in use.
3. Marks which are contrary to morality or public order.
It is understood that a mark cannot be considered as contrary
to public order for the sole reason that it does not conform to
some stipulation of the laws concerning marks, except where such
stipulation itself relates to public order.
Shall be considered as the country of origin:
The country of the Union where the depositor has a real and effective
industrial or commercial establishment; if he has not such an establishment, the
country of the Union where he is domiciled, and if he is not domiciled in the
Union the country of his nationality if he is a person within the jurisdiction of
one of the countries of the Union.
In no case shall the renewal of the registration of a mark in the country
of origin involve the obligation to renew the registration of the mark in other
countries of the Union where it has been registered.
The benefits of^priority shall be accorded to applications for the registration
of marks deposited within the period fixed by Article 4, notwithstanding the
fact that registration in the country of origin may not be completed until after
the expiration of such period.
The stipulations of paragraph 1 do not exclude the right of requiring from a
depositor a certificate of due registration, issued by the corripetent authority of
the country of origin, but no legal authentication of such certificate shall be
required.
Articles 6 bis.
The contracting countries undertake to refuse or to cancel, either administra-
tively if their legislation so permits, or at the request of an interested party, the
registration of any trade mark which is a reproduction of or an imitation capable
of creating confusion with a mark considered by the competent authority of the
country of registration to be well-known in that country as being already the
mark of a person within the jurisdiction of another contracting country, and
utilised for the same or similar classes of goods.
A period of at least three years shall be allowed for claiming the removal of
such marks. This period shall run from the date of registration of the mark.
There shall be no limit to the period within which application may be
made fpr the removal of marks registered in bad faith,
APPENDIX VI 112?
Article 6 ter .
The contracting countries agree to refuse or to cancel the registration, and to
prohibit by appropriate measures the utilisation, without authorisation by the
competent authorities, either as trade marks or as elements of trade marks, of
armorial bearings, flags and other State emblems of the contracting countries,
official signs and hall-marks indicating control or warranty adopted by them, and
all imitations thereof from an heraldic point of view.
The prohibition of the utilisation of official signs and hall-marks indicating
control or warranty shall apply solely in cases where the marks which contain
them are intended to be utilised for the same or similar classes of goods.
For the application of these stipulations the contracting countries agree to
communicate mutually through the medium of the International Bureau of
Berne, the list of State emblems and official signs and hall-marks indicating
control or warranty which they desire, or may hereafter desire, to place wholly
or within certain limits, under the protection of the present Article, and all
subsequent modifications of this list. Each contracting country shall forthwith
make the lists so communicated available to the public.
Any contracting country may, within a period of twelve months from the
receipt of the communication, transmit any objections which it may desire to
offer to the country concerned through the medium of the International Bureau.
In the case of State emblems which are well-known the measures prescribed
by paragraph I shall apply solely to marks registered after the signature of the
present Convention.
As regards State emblems which are not well-known and official signs and
hall-marks such stipulations shall be applicable only to marks registered more
than two months after the receipt of the communication provided
for in paragraph 3.
In cases of bad faith, however, each country shall be entitled to cause
removal of marks, even though registered before the signature of the present
Convention if they contain State emblems, signs or hall-marks.
The nationals of each country who have been authorised to make use of
State emblems, signs or hall-marks of their country, may continue to use them
even though they are similar to those of another country.
The contracting countries undertake to prohibit the unauthorised use in
trade of the State armorial bearings of the other contracting countries, when
such use is of a nature to cause deception as to the origin of the goods.
The above stipulations shall not prevent the countries from exercising the
power given in the third subsection of paragraph 2 of Article 6, to refuse or to
cancel the registration of marks containing, without authorisation, the armorial
bearings, flags, decorations, and other State emblems or official signs or hall-marks
adopted by a country of the Union.
Article 7.
The nature of the goods to which the trade mark is to be applied can, in no
case, form an obstacle to the registration of the mark.
Article 7 bis .
The contracting countries undertake to admit to deposit and to protect
marks belonging to associations, the existence of which is not contrary to the
law of the country of origin, even if such associations do not possess an industrial
or commercial establishment.
Nevertheless, each country shall be the sole judge of the particular conditions
under which an association may be allowed to obtain protection for its marks.
Article 8.
A trade name shall be protected in all the countries of the Union without
necessity of deposit or registration, whether or not it forms part of a trade mark.
Article 9.
All goods illegally bearing a trade mark or trade name shall be seized on
importation into those countries of the Union where this mark or name has a right
to legal protection.
1126
THE LAW OP PATENTS IN INDIA
Seizure shall be effected equally in the country where the mark or name
was illegally applied, or in the country into which the goods bearing it may
have been imported.
The seizure shall take place at the request either of the Public Prosecutor
or of any other competent authority or of any interested party whether an
individual or a body of persons corporate or unincorporate in conformity with
the domestic law of each country.
The authorities shall not be bound to effect the seizure of goods in transit.
If the laws of a country do not admit of seizure on importation, such seizure
shall be replaced by prohibition of importation or seizure within such country.
If the laws of any country do not admit either of seizure upon importation,
or of prohibition of importation, or of seizure within the country, and pending
the requisite modification of these laws, these measures shall be replaced by the
remedies available in such cases to nationals.
Article 10.
The stipulations of the preceeding Article shall be applicable to all goods
which falsely bear as an indication of origin the name of a specified locality or
country, when such indication is joined to a trade name of a fictitious character
or used with fraudulent intention.
Any producer, manufacturer or trader, whether an individual or a body of
persons, corporate or incorporate, engaged in the production, manufacture, or
trade of such goods, and established either in the locality falsely indicated as
the place of origin, in the district where the locality is situated, or in the country
falsely indicated shall in any case be deemed a party interested.
Article lObis .
The contracting countries are bound to assure to persons entitled to the
benefits of the Union an effective protection against unfair competition.
Every act of competition contrary to honest practices in industrial or
commercial matters constitutes an act of unfair competition.
The following acts among others shall be prohibited: —
1. All manner of acts, of such a nature as to create confusion by any
means whatsoever with the goods of a competitor;
2. False allegations, in the course of trade, of such a nature as to
discredit the goods of a competitor.
Article 10 ter.
The contracting countries undertake to assure to persons within the jurisdiction
of other countries x of the Union appropriate legal remedies to repress effectively
all acts referred to in Articles 9, 10 and lObis.
They undertake, further, to provide measures to permit syndicates and
associations which represent industries or trades interested, and of which the
existence is not contrary to the laws of their country, to take proceedings in the
Courts or before the administrative authorities with a view to securing repression
of the acts referred to in Articles 9, 10 and 10 bis so far as the law of the
country in which protection is claimed permits such action to the syndicates and
associations of that country.
Article 11.
The contracting countries shall, in conformity with their domestic legislation,
grant temporary protection to patentable inventions, utility models, industrial
designs or models, and trade marks, in respect of goods exhibited at official, or
officially recognised, international exhibitions held in the territory of one of them.
This temporary protection shall not prolong the periods of priority provided
by Article 4. If, at a later date, the right of priority is invoked, the administration
of each country may date the period of priority as from the date of introduction
of the goods into the exhibition.
Each country may require, as proof of the identity of the object exhibited,
and of the date of its introduction into the exhibition such evidence as it may
consider necessary.
APPENDIX VI
112d
Article 12.
Each of the contracting countries undertakes to establish a special Government
department for industrial property, and a central office for communication to the
public of patents, utility models, industrial designs or models, and trade marks.
This department diall publish an official periodical journal.
Article 13.
The International Office, established at Berne under the name “Bureau
international pour la Protection de la Propri6t6 Industrielle” is placed under the
high authority of the Government of the Swiss Confederation, which regulates
its organisation and supervises its working.
Tlie official language of the International Bureau is French.
The International Bureau centralises information of every kind relating to
the protection of industrial property and collates and publishes it. It studies
matters of general utility which interest the Union, and edits, with the help of
documents supplied to it by the various Administrations, a periodical journal in
French, dealing with questions concerning the object of the Union.
The numbers of this journal, as well as all the documents published by the
International Bureau, are circulated among the Administrations of the countries
of the Union in the proportion of the number of contributing units as mentioned
below. t Such further copies as may be desired, either by the said Administrations,
or by societies or private persons, shall be paid for separately.
The International Bureau shall at all times hold itself at the service of
countries of the Union, in order to supply them with any special information they
may need on questions relating to the international system of industrial property.
The Director of the International Bureau will furnish an annual report on its
working, which shall be communicated to all the countries of the Union.
The expenses of the International Bureau shall be borne by the contracting
countries in common. Until fresh sanction is given, they must not exceed the sum
of 120,000 Swiss francs per annum. This sum may be increased, in case of
necessity, by a unanimous decision of one of the conferences referred to in
Article 14.
To determine the quota which each country should contribute to this
common total of expenses, the contracting countries and those which may
afterwards join the Union are divided into six classes, each contributing in the
proportion of a certain number of units, namely: -
1st class 25 units.
2nd „ 20 ,,
3rd „ 15 „
4th „ 10 „
5th „ 5 ,,
6th „ 3 „
These co-efficients are multiplied by the number of countries in each class,
and the sum of the products thus obtained gives the number of units by which
the total expenses has to be divided. The quotient gives the amount of the
unit of expense.
Each of the contracting countries will designate at the time of its accession
the class in which it wishes to be placed.
The Government of the Swiss Confederation superintends the expenses of the
International Bureau, advances the ncessary funds and renders an annual
account, which will be communicated to all the other Administrations.
Article 14.
The present Convention shall be submitted to periodical revisions with a
view to the introduction of amendments calculated to improve the system of the
Union.
For this purpose, Conferences shall be held, successively in one of the contrac-
ting countries, among the delegates of the said countries.
The Administration of the country in which the Conference is to be held
will make preparations for the work of that Conference, with the assistance of
the International Bureau.
14 »
TttE LAW OF PATENTS IN INDIA
1130
The Director of the International Bureau will be present at the meetings
of the Conferences, and will take part in the discussions, but without the right
of voting.
Article 15.
It is understood that the contracting countries respectively reserve
to themselves the right to make separately, as between themselves, special
agreements for the protection of industrial property, in so far as such agreements
do not contravene the stipulations of the present Convention.
Article 16.
Countries which are not parties to the present Convention shall be allowed
to accede to it upon their request.
This accession shall be notified through diplomatic channels to the Govern-
ment of the Swiss Confederation, and by the latter to all the other countries.
It shall entail, as a matter of right, accession to all the clauses, and admission
to all the advantages stipulated in the present Convention, and shall take effect
one month after the dispatch of the notification by the Government of the Swiss
Confederation to the other countries of the Union, unless a subsequent date has
been indicated by the acceding country.
Article 16fcis.
The contracting countries have the right of acceding to the present Conven-
tion at any time, on behalf of their Colonies, Possessions, Dependencies and
Protectorates, or territories administered in virtue of a mandate from the League
of Nations, or of any of them.
For this purpose they may either make a general declaration, including all
their Colonies, Possessions, Dependencies and Protectorates, and the territories
referred to in paragraph 1, in the accession, or may expressly name those which
are included, or may confine themselves to indicating those which are excluded
therefrom.
This declaration shall be notified in writing to the Government of the Swiss
Confederation and by the latter to all the other countries.
Under the same conditions, the contracting countries may denounce the
Convention on behalf of their Colonies, Possessions, Dependencies, and Pro-
tectorates, or the territories referred to in paragraph 1, or of any of them.
Article 17.
The carrying out of the reciprocal engagements contained in the present
Convention is subject, so far as necessary, to the observance of the formalities
and rules established by the constitutional laws of those of the contracting
countries which are bound to procure their application which they engage to do
with as little delay as possible.
Article 17 bis.
The Convention shall remain in force for an unlimited time, till the expiry
of one year from the date of its denunciation.
This denunciation shall be addressed to the Government of the Swiss Con-
federation. It shall only affect the denouncing country, the Convention remaining
in operation as regards the other contracting countries.
Article 18.
The present Act shall be ratified and the ratifications deposited at The
Hague not later than the 1st May, 1928. It shall come into force, between the
countries which shall have ratified it, one month after that date. Nevertheless,
if before that date it has been ratified by at least six countries, it shall come
into force, between those countries, one month after the deposit of the sixth
ratification has been notified to them by the Government of the Swiss Confedera-
tion and, in the case of countries which may ratify at a later date, one month
after the notification of each of such ratifications.
This Act shall, as regards the relations between the countries which ratify it,
replace the Convention of Paris of 1883, revised at Washington on the 2nd June,
APPENDIX VI
1131
1911, and the Final Protocol, which shall, however, remain in force as regards
relations with the countries which shall not have ratified the present Act.
Article 19.
The present Act shall be signed in a single copy, which shall be deposited in
the archives of the Government of the Netherlands. A certified copy shall be
forwarded by the latter to each of the Governments of the contracting countries.
In witness whereof the respective Plenipotentiaries have signed the present
Act.
Done at The Hague, in a single copy, the 6th November, 1925.
[Here followed the signatures of the various representatives of the several
contracting countries. ]
[N. B . — This International Convention was again further considered and
discussed at the London Conference held at London on 2nd June 1934; when
certain further amendments were proposed. Since such provisional amendments
were subject to ratification, they have not been produced in this copy of the
text here set out. The text here set out comprises the English translation (as
presented by the Secretary of State for Foreign Affairs to Parliament) of the
French text agreed at the Hague Conference held at the Hague on 6th November
1925 and ratified according to the British ratification deposited on 1st May
1928. For the results and recommendations of the London Conference held at
London on 2nd June 1934, further reference may be made to the Circular issued
by the Board of Trade in England and entitled “International Convention for
the Protection of Industrial Property and International Agreement regarding
False Indications of Origin; comparison of the Hague and London texts with
explanatory notes by the British Delegates:” (Price 4 d: printed and published
by H. M. Stationery Office, Adastral House, Kingsway, London, W.C. 2).|
INDEX.
ACCOUNT OF PROFITS,
in infringement suit in India, 648, 779.
ADJOURNMENT,
application in infringement suit for, 648, 768.
ABSENCE OF FRAUD, 258.
meaning of fraud, 261.
meaning limited to fraud within British India, 262.
stages at which an objection of fraud may be raised,
before acceptance, 266.
in opposition proceedings, 266.
on petition for revocation, 266.
in suit for infringement, 266.
statutory grounds, 259.
ABUSE OF MONOPOLY, see “Obligations not to Abuse Monopoly.”
'‘ALLEGED INVENTION”,
meaning of the term, 143.
AGENTS, see Patent Agents.
AMENDMENT OF PATENTS, 75.
AMENDMENT OF SPECIFICATION,
2. Generally : —
development of the right to amend under English Law, 474.
entry in Register, 494, 495.
history of legislation regarding amendment in England, 479, 485.
originally no right to amend, 474.
origination of the right to amend under English Law, 474.
progressive extension of the right to amend for the benefit of the patentee,
479.
2. Amendment before the Controller -
advertisement, 487, 489.
advertisement after amendment, 493.
advertisement not necessary for mere correction of clerical error, 493.
amendment after acceptance of application, 487.
amendment before acceptance of application, 486.
appeal from Controller’s order, 492.
construction and effect of Section 17(9), 491.
effect of Controller’s order, 491.
fee payable, 489.
Planing of "any person” in Section 17(3), 399, 403, 490.
1134
THE LAW OF PATENTS IN INDIA
AMENDMENT OF SPECIFICATION— Contd.
2 . Amendment before the Controller — Contd .
nature of amendments allowable by Controller, 491.
not during pending Court proceedings, 490.
notice of opposition to amendment, 489.
powers of the Controller, 75.
restriction on recovery of damages, 492.
who can oppose, 490.
3. Amendment before the Court , 494.
AMENDMENT OF PLEADINGS,
appeal from order granting or refusing leave for — in infringement suit,
647, 737.
in infringement suit, 647, 737.
particulars of breaches, amendment of, 647, 738.
particulars of objections, amendment of, 647, 738.
APPEARANCE,
of Defendant in infringement suit, 646, 728.
APPLICATION FOR PATENT, (Chapter IX)
2. Generally : —
absence of disqualifications, 334, 347.
application by true and first inventor himself, 335.
applications by assigns ( see below),
applications by corporations, 348.
applications by Government Servants, 349.
applications by infants, 347.
applications by lunatics, 348.
applications by married women, 348.
applications by legal representatives ( see below),
mode of application, 350.
procedure on application in absence of opposition, 365, 366.
actual practice of the Patent Office in India, 375.
as to objections outside Section 5, 372.
construction of Section 5, 370.
investigation and search by Controller, extent of, 366.
objections may be raised by the Patent Office, 366.
to whom a patent may be granted, 334.
who may apply, 346.
2 . Application on communication from abroad ,
facilities of this method, 337.
where a foreign company is the communicator from abroad, 345.
3. Application by legal representative, 338.
form to be used for application, 339.
4 . Application by an Assign , 340.
assignment, 342.
application by a company as an assign, 344.
application by a foreign company, 344, 345.
difficulty in defining meaning of “assign of the true and first inventor”, 341,
INDEX
1135
APPLICATION FOR PATENT— Contd.
4. Application by an Assign — Contd.
nominee, 341.
proof of right to apply, 343.
proper form for application by this method, 342.
5. Applications under reciprocal arrangement , 352.
british India not a party to the International Convention, 364.
international Convention, 360.
international Convention not applicable to British India, 361.
no reciprocal arrangements under the International Convention, 361.
reciprocal arrangements with certain Indian States, 356.
reciprocal arrangements with other parts of His Majesty’s Dominions, 356.
reciprocal arrangements with the United Kingdom, 352, 355.
6 . Application for a patent of addition, 365.
ASSESSORS,
application in infringement suit for hearing with, 647, 759.
costs paid by the State, 760.
ASSIGNMENT,
as to mere agreement to assign, 591.
as to purported assignment of a patent in futuro, 592.
bare assignment does not ordinarily transfer right to sue for a past in-
fringement, 592.
power of a patentee to assign his Patent, 584.
power of an assignee to re-assign the Patent, 586.
registration of assignment, 588.
stamp, 589.
writing necessary to effect a transfer, 586.
BELATED OPPOSITIONS,
no belated oppositions in India, 432, 433.
BIO-CHEMICAL PROCESS, 141.
BROUGHAM’S, LORD, ACT, 475.
CAMERA, HEARING IN,
application in infringement suit for hearing in camera, 647, 760.
CERTIFICATE OF VALIDITY QUESTIONED,
1. In infringement suit: — , 649, 782.
appeal from order, as to, 649, 785.
discretion of the Court, 649, 785.
effect of a certificate, 649, 782.
grant of certificate by Appeal Court, 785.
plaint should be pleaded in, 711.
Practice regarding the grant of the certificate, 649, 783.
nature of the relief, 649, 782.
where Defendant does not appear or abandons the defence, 649, 784.
2. In suit for threats : —
whether a certificate obtainable, 828.
1136
THE LAW OP PATENTS IN INDIA
CIVIL COURTS,
powers and functions of the Civil Courts, 88, 89.
COMMON KNOWLEDGE,
difference between, and public knowledge, 173.
COMPULSORY LICENCE, PROCEEDINGS FOR,
petition to H. E. the Governor General under Sections 22-23, 455. ( See also
Chapter VIII).
when compulsory licenses will be enforced, 40.
CONDITIONS IMPOSED BY THE CROWN ON THE PATENTEE,
renewal fees, 38.
terms as to compulsory working and not to abuse the monopoly, 38.
CONSTRUCTION OF SPECIFICATION, see Specification, Construction of.
COMMISSION TO EXAMINE WITNESSES,
application in infringement suit for commission, 647, 757.
as to appeal from order granting or refusing commission, 758.
CONSOLIDATION OF SUITS,
application in infringement suit for, 647, 760.
CONTEMPT PROCEEDINGS FOR BREACH OF INJUNCTION IN IN-
FRINGEMENT SUIT, 649, 787.
against a person not a party to the original suit, 650, 788.
form of the order, 650, 789.
motion, 649, 787. *
personal liability of Directors, 650, 788.
where Patent has been amended, 650, 789.
where second mode of infringement is not the same as the original mode,
649, 788.
CO-PATENTEES,
joint ownership or as tenants in common, 657-659.
nature of ownership of Patent where more than one patentee, 654.
survivorship, 660.
CORRESPONDENCE, ADMITTED BRIEF OF,
in infringement suit, 736.
COST,
of obtaining a Patent, 107.
of litigation, consideration of, 708.
COSTS,
in infringement suit, 649, 785.
as between Attorney and Client, 649, 786.
DAMAGES IN INFRINGEMENT SUIT, 648, 776.
circumstances in which a decree for damages may be obtained, 648, 777.
distinction between damages and profits, 648, 776.
effect of decree for damages in respect of infringing goods, 649, 778.
measure of damages if Plaintiff does not manufacture, 648, 777.
measure of damages if Plaintiff manufactures, 648, 778.
option of Plaintiff for damages or account of profits, 648, 776.
period over which damages or profits may be obtained, 648, 777.
iNbtex
ii37
DEATH.
devolution of Patent, as personal property on death, 653.
survivorship of a right to sue, 653.
DECISION ON ALL POINTS,
whether a party is entitled to a — in an infringement suit, 648, 772.
DELIVERY UP OR DESTRUCTION, ORDER FOR, IN INFRINGEMENT
SUIT, 649, 780.
form of order, 649, 781.
nature of the remedy: additional to damages, 649, 780.
stay of order where Defendant appeals, 649, 781.
DEVOLUTION OF A PATENT,
patent on death passes as personal property, 653.
survivorship of the right to sue as to, 653.
DIRECTIONS,
obtaining directions in infringement suit, 647, 739.
DISCOVERY AND INSPECTION OF DOCUMENTS, see under Inspection
of Documents.
DISCOVERY,
discovery of new purpose for old matter, 135.
mere discovery not patentable, 133.
DISCRETIONARY GROUND FOR REFUSAL, see Unfitness for Exercise
of Prerogative, 163.
DISTRICT COURTS,
distribution of throughout British India, 690.
DISTRICT COURTS, JURISDICTION OF, IN INFRINGEMENT SUITS,
division of British India for judicial proceedings, 687.
district Courts throughout British India, 690.
leave to sue, when necessary in District Courts, 698.
DISTRICT COURTS, JURISDICTION OF, IN SUIT FOR THREATS,
jurisdiction under Section 36, 814.
DOCUMENTARY PUBLICATION, 195.
EARLY DATE FOR HEARING,
application in infringement suit for, 647, 761.
ENFORCEMENT OF MONOPOLY RIGHTS, see also Infringement suit,
Proceedings in,
all remedies of a civil action now available, 639.
ancient remedies in England, 633.
court of Star Chamber, 633.
dual remedies at Law and in Equity formerly separately available, 635.
final reliefs obtainable in the suit, 644.
interlocutory reliefs, 645.
143
lift THE LAW OF PATENTS IN INDIA
ENFORCEMENT OF MONOPOLY RIGHT $-Contd.
jurisdiction in monopoly disputes in England removed from Court of Star
Chamber to the Court of Common Law, 634.
letter of demand, 641.
matters relating to the institution of the suit, such as may arise prior to the
filing of the Plaint, 645.
matters which may arise at or in connection with the hearing of the suit
itself, 648.
matters relating to the final reliefs obtainable in the suit, 648.
matters relating to proceedings subsequent to decree, 649.
other preliminary matters such as may arise prior to the hearing of the
suit itself, 646.
preliminary matters and subsidiary matters connected with the disposal of
the suit, 645.
survivals in present Patent Law partly traceable to development of dual
remedies, 637.
ESTOPPEL,
if — can bar defence of invalidity, 601.
in regard to application for interim injunction, 724.
no — from infringement suit so as to bar subsequent petition for revocation
filed on behalf of the public, 606.
EXCLUSIVE PRIVILEGE,
former form of monopoly in India (under Act of 1856), 17.
EXECUTION PROCEEDINGS,
after decree in infringement suit, 649, 787.
EXPENSE,
consideration of, in suit for infringement, 708.
EXPERIMENTS,
application in infringement suit regarding making of, 647, 749.
court expert, to make — and report to the Court, 750.
experts, as to, 749.
EXPERT WITNESSES,
application in infringement suit for limiting number of, 647, 753.
EXTENSION OF THE TERM OF A PATENT,
as to appeal from a decision on a Petition for extension, 528.
development of the right to claim extension, 499.
extension of Patent of Addition, 525.
grounds on which extension may be obtained, 508-510.
as to ingenuity exercised by the patentee, 511.
bearing of foreign patents, 516.
importance of good faith, 516.
inadequate remuneration, 513, 514.
laches or default, 516.
position of an assignee, 512, 515.
public merit of the invention, 511.
whose remuneration is the criterion, 514.
INDEX
1139
EXTENSION OF THE TERM OF A PATENT - - Contd.
grounds on which exceptional extension may be obtained, 518.
history of previous English Law relating to extension or prolongation, 497,
500.
necessity for foresight, 520.
necessity for separate accounts, 520.
period of extension, 507.
petition to H. E. the Governor General in Council, 506.
H. E. the Governor General in Council may dispose of the Petition himself,
507.
may make a reference to the High Court, 507.
present English Law, 503.
present Indian Law, 506.
previous Indian Law, 504.
procedure on a petition for extension, 520.
forms to be used, 522.
necessary parties, 525.
who may apply for extension, 525.
procedure at the hearing of a reference to the High Court, 527.
court adjudicates on the original Petition, 528.
amendment of grounds of objection, 528.
FIAT OF THE ADVOCATE GENERAL, PRELIMINARY TO A PETITION
FOR REVOCATION,
advisable always to obtain the fiat, 445.
fiat not obtained as of course, 444.
fiat not obtainable nunc pro tunc. 446, 447, 448.
fiat not ordinarily refused, 444.
notice of the application to the A. G., 441.
origin and object of provisions necessitating the obtaining of the fiat, 437-440.
FINAL INJUNCTION IN INFRINGEMENT SUIT, 648, 773.
form of, 648, 774.
nature of the remedy, not perpetual, 648, 773.
stay of injunction where Defendant appeals, 648, 774.
where certain only and not all claims are infringed, 774.
P'RAUD, see 44 Absence of Fraud”.
FREEDOM FROM OBJECTION OF OBTAINING, 263.
fraud immaterial, 264.
identity of applicant’s invention with what obtained, 265.
knowledge material, 265.
meaning limited to acts within British India, 265.
stages at which an objection for obtaining may be raised, 267.
where more than one person has assisted in the invention, 266.
FREEDOM FROM PRIOR GRANT,
a ground of invalidity, 217.
jn reciprocity cases, 218,
1140 THE LAW OF PATENTS IN HtoIA”
GAMES. • ,
counter and board games, 131.
GRANT OF A PATENT,
conditional nature of the grant, 594.
effect of, 37.
examination by Controller of application before grant, 71.
powers of the Controller, 71.
powers of H. E. the Governor General, 85.
GOVERNOR GENERAL, see undei H. E. the Governor General in Council
HEARING IN CAMERA,
application in infringement suit for, 647, 760.
H. E. THE GOVERNOR GENERAL IN COUNCIL (PROCEEDINGS
BEFORE),
appeals to, 87.
appeals from Controller, provisions now in force in India, 833.
appellate jurisdiction under the Act, 829.
corresponding provisions in England as to Appeals from the Comptroller,
831.
disposal of appeal, whether on paper or by re-hearing, 835-838.
jurisdiction of first instance under the Act, 829.
powers and duties of, 85.
as to appeals from the Controller, 87, 835.
as to extension of patents, 85.
as to giving directions in cases of doubt or difficulty, 88.
as to grant of patents, 85.
as to revocation of patents under Section 25, 85.
powers of H. E. the Governor General in Council regarding appeals, 835.
power to remand to Controller for re-hearing, 836.
previous Indian provisions, 833.
procedure for forwarding Petition or Appeal, 830.
HIGH COURTS; JURISDICTION OF, IN INFRINGEMENT SUITS,
appeal from order refusing leave, 682.
defendant’s remedies when leave wrongly granted, 682.
"district Court” in. Section 29(1) includes High Court, 668.
fresh leave may be necessary on amendment, 675.
grounds on which leave may be refused or revoked, 675.
importance of local limits of High Courts, 684.
jurisdiction generally, 668, 686.
jurisdiction with leave to sue in a High Court, 671.
leave may be revoked, 673.
local limits of jurisdiction of High Courts of Calcutta, Madras and Bombay,
684.
local limits for Bombay High Court, 686.
local limits for Calcutta High Court, 684.
local limits for Madras High Court, 686.
practice for obtaining leave to sue in Calcutta High Court, 681.
waiver of objection to want of jurisdiction, as to, 683,
INDEX
r.. ■
1141
HIGH COURTS, JURISDICTION OF, FOR HIGH PREROGATIVE WRITS,
jurisdiction of chartered High Courts to issue High Prerogative Writs, 793,
794, 796.
local extent of jurisdiction, as to, 797.
origin of powers of chartered High Courts to issue Writs of Prohibition
and Writs of Certiorari , 794, 796.
HIGH COURTS, JURISDICTION OF, IN SUITS FOR THREATS,
jurisdiction of High Courts having original jurisdiction, 814.
HIGH PREROGATIVE WRITS,
Calcutta High Court, origin of powers of, to issue, 794.
certiorari.
circumstances in which the writs may be issued, 798.
absence of other adequate remedy, 802.
on a judicial body, 798.
want of or excess of jurisdiction, 801.
where the remedy will be effective, 801.
codified law in British India, 792.
discretion, as to, 803.
local extent of jurisdiction of a chartered High Court, as to, 797.
Madras High Court, origin of powers of, to issue, 796.
mandatory injunction under Section 45 of the Specific Relief Act (corres-
ponding to English Writ of Mandamus), 792, 804.
nature and differences between the various writs, 791.
Power of certain Courts in British India to issue, 793, 796.
prohibition.
wide exercise of the jurisdiction, 791.
will lie in a proper case against the Controller of Patents, 804.
writ of mandamus, none in India apart from Section 45 of the Specific
Relief Act, 792.
ILLEGALITY, 119.
generally, 119.
illegal purpose, 161.
IMMORALITY, 119, 163.
INFRINGEMENT (CHAPTERS XIV, XV, XVI, XVII),
1. Generally
four classes of defence to a claim of alleged infringement, 538.
(i) Defences in relation to the grant, 539.
(if) Defences of denial that alleged act was committed, 542.
(lit) Defences in relation to the specification, 543.
(it/) Lord Moulton’s Defence, 545.
infringement not a crime, 537.
prohibition in the English form of grant contained in the Royal Command,
535.
prohibition merely implied in the Indian form of grant, 536.
similarity, degree of, 608.
(See also under Similarity, degree of, etc.)
statutory right under Section 29 to sue for infringement, 537.
what constitutes infringement, 537,
1142
THE LAW OF PATENTS IN INDIA
INFRINGEMENT — Contd.
2 . Defences against a claim af alleged infringement : —
DEFENCES IN RELATION TO THE GRANT.
1. No grant made : or early enough , 539, 548.
2. Act complained of done before date of advertisement of acceptance f
539, 549.
3. Patent expired prior to date of alleged infringement , 539, 550.
4. Patent lapsed for non-payment of fees, prior to the date , 540, 550.
5. Patent revoked , 540, 550.
6 . Patent surrendered , 540, 550.
7. Patent declared invalid , 540, 550.
8. Patent being a Patent of addition has terminated, 540, 550.
9. Where Patent though extended yet was not in force, 540, 550.
10. Where Patent though revived yet was not in force, 540, 550.
11. Where Patent though restored yet was not in force , 540, 550.
12. Act complained of done outside locality covered by the grant, 540, 551.
13. Act complained of done in a foreign ship or aircraft within Section 42,
541, 551.
14. Act complained of done in a manner not to constitute infringement , 541,
553.
15. Defendant had a licence , 541, 570.
16. Defendant acted on directions from the Patentee, 541, 575.
17. Defendant was a joint Patentee with the Plaintiff , 541, 578.
18. Defendant was the Agent of the Patentee, 541, 578.
19. Defendant was Agent of a joint Patentee, 541, 578.
20. Defendant acted as an innocent infringer, 541, 578.
ho defence that Defendant acted as agent of another, 578.
21. Patent was granted or extended on conditions and Defendant within the
conditions, 541, 581.
22. Where Defendant is the government. Defendant relieved from liability by
conditions of the grant, 349, 542, 582.
23. Where Defendant is the government, Defendant relieved from liability
under Section 21, 542, 582.
24. Plaintiff not the registered Patentee, 542, 582.
25. Plaintiff not the person entitled to the benefit of the Patent at date of
act complained of, 542, 583.
26. No valid assignment to Plaintiff though suing as assignee, 542, 583.
DEFENCES OF DENIAL THAT ALLEGED ACT WAS
COMMITTED.
27. At all . 542, 593.
28. By the Defendant or by his agent or by any person for whose act the
Defendant will be liable, 542, 593.
DEFENCES IN RELATION TO THE SPECIFICATION.
29. Patent invalid for want of subject matter; no manner of manufacture ,
543, 598.
30. Patent invalid for want of subject matter; no inventive step , 543, 5$$,
In£>EX
1143
INFRINGEMENT— ConW.
31. Patent invalid for want of novelty ; anticipation bv common knowledge,
544, 599.
32. Patent invalid for want of novelty; prior grant , 544, 599.
33. As to invalidity by reason of a prior grant , 544, 599.
34. Patent invalid for want of utility, 544, 599.
35. Patent invalid for insufficiency; in description of ambit , 544, 599.
36. Patent invalid for insufficiency; in description of nature and directions,
544, 599.
37.. Patent invalid for insufficiency ; in description of best means , 544, 599.
38. Patent invalid because applicant not true and first inventor, 544, 599.
39. Patent invalid for fraud , 544, 599.
40. Patent invalid by reason of abuse of monopoly, 545, 600.
41. Alleged infringement not covered by Plaintiffs Patent specification, 545,
607.
42. Patent has been amended and infringement not covered by unamended
specification, 545, 627.
43. Patent has been amended and original claim not framed in good faith
and with reasonable skill and knowledge , 545, 628.
LORD MOULTON'S DEFENCE.
44. Defendant's article or process not novel , 545, 629.
INFRINGEMENT SUIT, PROCEEDINGS IN (Chapter XVII),
(N.B .- -The items here indexed under this head are arranged not alphabetically
but numerically in the sequence followed in the text.)
Matters relating to the institution of the suit , such as may arise prior to the
hearing of the suit itself: -645, 650.
1. Parties, who can sue as Plaintiff , 645, 650.
as to Assignees, 645, 651.
as to Licensees, 645, 651.
as to Aliens, 645, 652.
after death of patentee, 645, 653.
as to joinder of Plaintiffs, 645, 654.
after death of one of several co-patentees, 645, 660.
2. Parlies , who can be sued as Defendant, 645, 660.
as to joinder of Defendants, where more than one infringer, 645, 661.
3. Joinder of causes of action, 645, 662.
where more than one infringement of the same patent, 645, 662.
where there is more than one patent, 645, 662. •
joinder of breach of patent rights with other cause of action, 645, 662.
non-joinder or mis-joinder of Plaintiffs or Defendants, 645, 663.
mis-joinder of causes of action, 645, 665.
waiver, 665, 666.
4. Jurisdiction — Court in which suit may be brought, 646, 668.
a. Jurisdiction of High Courts, 668 — 686.
“district Court” in Section 29(1) includes High Court, 668.
jurisdiction with leave to sue in a High Court, 671.
leave may be revoked, 673.
1144 THE LAW OP PATENTS IN INblA
INFRINGEMENT SUIT,. PROCEEDINGS IN — Contd.
4. Juristic tion — Contd.
fresh leave may be necessary on amendment, 675. .
grounds on which leave may be refused or revoked, 675.
practice for obtaining leave in Calcutta High Court, 681.
appeal from order refusing leave, 682.
defendant's remedies when leave wrongly granted, 682.
as to waiver of objection to want of jurisdiction, 683.
local limits of jurisdiction of High Courts of Calcutta, Madras and
Bombay, 684.
local limits for Calcutta High Court, 684.
local limits for Madras High Court, 686.
local limits for Bombay High Court, 686.
b. Jurisdiction of District Courts , 687-698.
district Courts, division of British India for judicial proceedings,
687.
district Courts, throughout British India, 690.
leave to sue, when necessary in District Courts, 698.
jurisdiction in suits against Secretary of State, 699.
as to jurisdiction in suits against the Federation of India, 701.
5. Limitation , 646, 702.
three years, 702.
6. Questions of estoppel and res judicata , 646, 702.
where there have been previous proceedings between the same
parties, 646, 703.
where there have been previous proceedings between different
parties, 646, 704.
7. Inspection of Defendant's machine , 646, 705.
before Plaint, 646, 705.
inspection of documents before Plaint, 646, 705.
8. Service of the writ of summons , 646, 706-707.
Other preliminary matters such as may arise prior to the hearing of the suit
itself:— 646, 709.
1. The Plaint, 646, 709.
contents of, 646, 709.
particulars of breaches, 710.
practice in India, 710.
whether Plaintiff may give evidence outside particulars of breaches,
646, 712.
2. Interim injunction, 646, 713.
ex parte application, 646, 713-716.
orally, before filing of Plaint, 717.
application on motion after notice, 646, 718.
service of notice of motion, 718.
service of notice of motion by registered post, 718.
grounds for obtaining interim injunction, 719-726.
discretion, 720.
patent must be well established, 720.
index
1145
INFRINGEMENT SUIT, PROCEEDINGS IN — Contd.
2. Interim injunction — Contd.
as to novelty, 720.
prima jade case of infringement, 722.
necessity for interim injunction must be shown, 722.
delay in making application, 722.
balance of convenience, 723.
conduct and position of the parties, 724.
estoppel, 724.
acquiescence, 725.
interim injunction on threat of infringement, 725.
undertaking as to damages given by Plaintiff, 646, 726.
other terms on which interim injunction may be granted, 646, 727.
alternative order for Defendant to keep accounts, 646, 727.
costs, 646, 727.
compromise of the suit with the motion, 646, 728.
3 . Appearance of Defendant in the suit, 646, 728.
4. The Written Statement, 646, 729.
time for filing, 646, 730.
contents of, 646, 732.
defences in, 732.
particulars of objections, 647, 733.
counter-claim for revocation in as to, 647, 733.
written statement by Plaintiff in reply, 647, 735.
5. Further and better particulars, 647, 735.
6. Notice to admit facts and documents, 647, 736.
admitted brief of correspondence, 736.
7. Amendment of pleadings, 647, 737.
appeal from order granting or refusing amendment, 647, 737.
particulars of breaches, amendment of, 647, 738.
particulars of objections, amendment of, 647, 738.
8 . Obtaining directions, generally, 647, 739.
9 . Application for discovery and inspection of documents, 647, 741.
peculiar importance of inspection in Patent suits, 742.
what documents to be disclosed in affidavit of documents, 743.
10. Application for inspection of apparatus, 647, 744-749.
in the case of secret process, 747.
prior users, inspection of, 748.
11. Application regarding making of experiments , 647, 749.
experts, as to, 749.
court expert, to make experiments and report to the Court, 750.
12. Application for limiting number of scientific witnesses, 647, 753.
13. Application for administering interrogatories , 647, 753.
what interrogatories will be allowed, 754.
14. Application for commission, 647, 757.
as to appeal, 758.
144
1146 THE LAW OF PATENTS IN INDIA
INFRINGEMENT SUIT, PROCEEDINGS IN —Contd.
15. Application for hearing with assessors , 647, 759.
costs paid by the State, 760.
16. Application for hearing suit in camera , 647, 760.
17. Application for consolidation of suits , 647, 760.
18. Application for stay of the suit, 647, 760.
as to appeal from order allowing or refusing stay, 761.
alternative order for adjournment, 761.
19. Application for early date for hearing , 647, 761.
20. Application for judgment on admissions, 647, 761.
as to appeal from an order rejecting such application, 762.
21. Application for suit to he placed on undefended list, 647, 762.
22. The Special List, 647, 764.
dismissal of suit for want of prosecution, 764.
rule 36 of Calcutta High Court Rules held not ultra vires, 764.
right of Plaintiff to file fresh suit, 648, 765.
23. Disposal of the suit in the event of settlement , 648, 765.
Matters which may arise at or in connection with the hearing of the suit : —
648, 767.
1. Trial of preliminary point first , 648, 767.
2. Application for adjournment, 648, 768.
3. Onus, 648, 769.
4. The right to begin and the right to reply, 648, 771.
5. Inspection by the Court, 648 (772).
6. Whether a party is entitled to a decision on all points , 648, 772.
Matters relating to the final reliefs obtainable in the suit : —
1. Final injunction, 648, 773.
nature of the remedy, not perpetual, 648, 773.
form of,'648, 774.
where certain only and not all claims are infringed, 774.
stay of injunction where Defendant appeals, 648, 774.
2. Damages, 648, 776.
option of Plaintiff for damages or account of profits, 648, 776.
distinction between damages and profits, 648, 776.
circumstances in which a decree for damages may be obtained, 648, 777.
period over which damages or profits may be obtained, 648, 777.
measure of damages if Plaintiff does not manufacture, 648, 777.
measure of damages if Plaintiff manufactures, 648, 777.
effect of decree for damages in respect of infringing goods, 649, 778.
3. Account of profits , 649, 779.
4. Order for Reference to ascertain damages or profit, 649, 779.
form of order, 649, 779.
inspection for the purposes of the references, 649, 779.
stay, where Defendant appeals, 649, 780.
INDEX
1147
INFRINGEMENT SUIT, PROCEEDINGS IN—Confd.
Matters relating to the final reliefs obtainable in the suit — Contd.
5. Order for delivery up or destruction of stocks , 649, 780.
nature of the remedy, additional to damages, 649, 780.
form of order, 649, 781.
stay of order where Defendant appeals, 649, 781.
6. Certificate of validity questioned , 649, 782.
nature of the relief, 649, 782.
effect of a certificate, 649, 782.
practice regarding the grant of the certificate, 649, 783.
where Defendant does not appear or abandons defence, 649, 784.
discretion of the Court, 649, 785.
appeal from order as to, 649, 785.
grant of certificate by Appeal Court, 785.
7. Costs, 649, 785.
as between Attorney and Client, 649, 786.
Matters relating to further proceedings subsequent to the decree : —
1. Application for stay of execution, 649, 787.
2. Appeal, 649, 787.
3. Execution proceedings , 649, 787.
4. Contempt proceedings, 649, 787.
by motion for breach of injunction, 649, 787.
where second mode of infringement is not the same as the original
mode, 649, 788.
against a person not a party to the original suit, 650, 788.
personal liability of Directors, 650, 788.
where Patent has been amended, 650, 789.
form of the order, 650, 789.
INJUNCTION, FINAL, see under Final Injunction.
INJUNCTION, INTERIM, see under Interim Injunction.
INSPECTION, CENTRES, 69.
INSPECTION OF APPARATUS OR MACHINE,
application in infringement suit, 647, 744-749.
application in case of a secret process, 747.
before plaint in infringement suit, 646, 705.
by Court in infringement suit during hearing, 648, 722.
prior users, inspection of, 748.
INSPECTION OF DOCUMENTS,
before plaint, 648, 705.
discovery and inspection in infringement suit, 647, -741.
peculiar importance of — in Patent suits, 742.
what documents to be disclosed in affidavit of documents, 743.
INSUFFICIENCY OF DESCRIPTION, see “Sufficiency in the Specifica-
tion.”
1148
THE LAW OP PATENTS IN INDIA
•
INTEREST NECESSARY, FOR OPPONENT TO HAVE IN OPPOSITION
PROCEEDINGS, 403, 405.
interest at time of hearing sufficient, 409.
manufacturing interest not necessary, 403, 407.
meaning of “any person'* in Section 9(1), 399, 403.
nature of interest necessary, 403, 405.
INTERIM INJUNCTION IN INFRINGEMENT SUIT, 646, 713.
acquiescence, 725.
alternative order for Defendant to keep accounts, 646, 727.
application ex parte , 646, 713-716.
application on Motion after notice, 646, 718.
application orally before filing plaint, 717.
balance of convenience, 723.
compromise of the suit with the motion, 646, 728.
conduct and position of the parties, 724.
costs, 646, 727.
discretion, 720.
as to novelty, 720.
necessity for interim injunction must be shown, 722.
patent must be well established, 720.
delay in making application, 722.
estoppel, 724.
grounds of obtaining interim injunction, 719-726.
service of notice of motion, 718.
service of notice of motion by registered post, 718.
terms on which interim injunction may be granted, 646, 727.
undertaking as to damages given by Plaintiff, 646, 726.
threat only of infringement, 725.
INTERROGATORIES,
application in infringement suit for administering, 647, 753.
what interrogatories will be allowed, 754-757.
INVALIDITY,
defences of invalidity in suit for infringement; see also Infringement,
Defences.
defences of invalidity available to Defendant in infringement, 595.
estoppel, if can bar defence of invalidity, 601.
grounds of invalidity directly available under Section 26(1), 598.
various grounds of invalidity available under Section 29(2), 595.
INVENTION,
bare invention, without patent, 1.
commercial value of an invention, 52-54.
effect of purported assignment of, before grant, 1, 49.
legal position before and after grant of Patent, 16.
INVENTIVE STEP,
in a combination, 155.
in chemical patents, 157*
INDEX
1149
INVENTIVE STEP — Contd.
in selective patents, 151.
long-felt want, as evidence of, 149.
“problem to be solved”, evidence of, 147.
requisite for valid patent, 117, 145.
result, as evidence of, 159.
JUDGMENT ON ADMISSIONS,
application in infringement suit for, 647, 761.
as to appeal from an order rejecting such an application, 762.
JURISDICTION IN INFRINGEMENT SUIT,
in suits against Secretary of State, 699.
in suits against the Federation of India, 701.
jurisdiction of High Courts, see under High Courts,
jurisdiction of District Courts, see under District Courts.
KNOWLEDGE,
difference between common and public, 173.
LETTER OF DEMAND,
contents of, 641, 642.
LETTERS PATENT,
as insurance of profits from the invention, 53.
comparison between Indian and English form, 30, 31.
form of, in India, 29.
origin, derivation and meaning, 2, 3.
parts of, 23-31.
the Address, 25, 30.
the Recitals, 26, 30.
the Grant, 27, 31.
the Prohibition, 27, 31.
the Proviso, 28, 31.
the direction for the construction of the grant, 29, 31.
valuation of, 55.
LICENCE,
form of licence, 573.
implied licence, 574.
licence how differs from assignment, 571.
licence or benefit thereunder transferable by sub-licence when agreed, 572.
licence personal unless agreed to the contrary, 572.
power of a patentee to grant licences, 571.
registration of licences, 573.
sub-licence arising on estoppel, 572.
LIMITATION, 646, 702.
three years, 702.
LORD BROUGHAM S ACT, 475.
LORD MOULTON S DEFENCE,
against a claim for alleged infringement, 545, 629.
1150
THE LAW OF PATENTS IN INDIA
MANNER OF MANUFACTURE,
a term of art, 115.
“alleged invention" meaning of, 142.
bare principle not a — , 122, 123.
bio-chemical process may be a — , 141.
counter and board games, 131.
discovery of new purpose for old matter not patentable, 134-137.
enlarged meaning of the term, 113.
medicine whether patentable in India, 139.
' mere discovery not patenable, 132.
mere plan, not a — , 122.
mere scheme not a — , 122.
mere system not a — , 122.
but,
mode of executing a principle is patentable, 127.
mechanical device is patentable, 127.
must be a manufacture associated with commerce and trade, 139.
new combination of known process and known product may be patentable in
India, 139.
“plant patents," agricultural plants held not patentable, 141.
MECHANICAL DEVICE, 129.
MEDICINES, 139.
MONOPOLIES, STATUTE OF, see Statute of Monopolies.
MOULTON'S, LORD, DEFENCE, 545, 629.
NATURAL JUSTICE,
principles of, applicable in opposition proceedings, 81.
NOTICE TO ADMIT FACTS AND DOCUMENTS,
admitted brief of correspondence, 736.
in infringement suit, 647, 736.
NOVELTY,
anticipation by prior common knowledge, 172.
anticipation by prior public knowledge, 173.
anticipation by oral publication, 204.
anticipation must be within British India, 172.
demanded by Statute of Monopolies, 169.
demanded at Common Law, 169.
how far a question of law pr fact, 215.
invalidity for want of, 170, 171.
publication, various means of, 174.
publication, as to confidential communications, 205.
publication by documents at the Indian Patent Office, 205-213.
publication degree of publicity necessary to constitute public knowledge,
172, 174, 179, 195, 198, 200.
publication, evidence of, 203.
requisite for a valid patent, 169-171.
*• iNbfeX
NOVELTY- -Contd.
stages at which objections for want of novelty may be raised, 215.
before acceptance, 215.
in opposition proceedings, 216.
on petition for revocation, 216.
in an infringement suit, 217.
various methods of anticipation, 172.
OBLIGATIONS NOT TO ABUSE MONOPOLY, 268.
“adequate extent," 322.
compulsory licence, 309, 313, 332 (and Ch. VIII).
construction of Sections 22 and 23, 306.
policy, whether protective or free trade, 306.
“demand not met," 309.
English Law,
previous English Law, 268.
present day law in the United Kingdom, 284.
English statutory grounds of abuse of monopoly, 284.
history of the law in the United Kingdom, 295.
development of the law in the United Kingdom, 295.
“exclusively or mainly outside India," 320, 321.
Indian Law, ^
previous Indian Law, 297.
present day law in India, 300.
history of the law in India, 303.
development of the law in India, 303.
comparison between Indian and English Law, 304.
construction of the Indian Act, 306.
“manufactured outside India," 319.
“patented article," 331, 333.
“satisfactory reasons," 322.
section 22, 308.
section 23, 319.
stages at which objections for abuse of monopoly may be raised, 333.
on petition for revocation, 333.
as defence in a suit for infringement, 333.
“unfairly prejudiced," 309.
revocation, order for, 332.
OBTAINING, see Freedom from Objection of Obtaining.
ONUS,
onus of proof in infringement suit, 648, 769.
OPPOSITION PROCEEDINGS, 399.
appeal from decision of Controller in opposition proceedings, 433.
belated oppositions, no — in India, 432, 433.
construction of Section 9, 410.
difference in grounds available under Indian and English Law, 426 .
grounds of opposition, 410.
grounds under Section 9, 410.
ground of fraud, 421 .
1162 THE LAW OP PATENTS IN INDIA
OPPOSITION PROCEEDINGS — Contd.
ground of illegality, 421.
ground of immorality, 421.
ground of “no manner of new manufacture/’ 412.
ground of unfitness for exercise of Crown’s prerogative, 421.
ground of want of utility, 421.
interest at time of hearing sufficient, 409.
interest requisite for an opponent, 399, 400, 403, 405, 407, 409.
manufacturing interest not necessary, 403, 407.
meaning of “any person’’ in Section 9(1), 399, 403.
meaning and effect of words “on no other grounds’* in Section 9, 414,
415-424.
nature of the interest necessary that the opponent shall have, 403, 405.
notice of opposition, 399.
opposition to the grant, 399.
summary of objections which may be raised in India in opposition pro
ceedings, 425.
who may oppose, *399, 400, 403.
PARTICULARS,
further and better, in infringement suit, 647, 735.
PARTICULARS OF BREACHES,
practice in India, 710.
should be stated as schedule to the Plaint, 710.
whether Plaintiff may give evidence outside, 646, 712.
PATENT, see also Letters Patent.
advantages and disadvantages of its conditional nature, 109.
adjustment between Royal Prerogative and liberty of the subject, 4, 16.
cash values paid, 61.
coke’s difinition of illegal monopoly, 8.
commercial value of a patent, 52-60.
compared with copyright, 34, 35, 36.
compared with passing-off, 34, 35.
compared with trade-mark rights, 35, 36.
conditional nature of the grant, 109.
cost of obtaining a patent, 107.
declaration of the law in the Statute of Monopolies, 13-16.
development of Patent Law in England, 3.
development of Patent Law in India, 16.
difference between patent and other rights, 34.
essentials of a good patent, 110.
extent of patent rights now obtainable in British India, 23.
history of development in India, 17-22.
importance of the exclusive rights granted by an Indian patent, 36.
modem patent law based on the exception in the Statute of Monopolies, 15.
monopolies at Common Law in England, 3.
previous Indian Acts, since repealed, 17-19.
royal preprogative, 3, 35.
the King’s Book, 12.
valuation of, 55.
INDEX il53
PATENT AGENTS. 90, 93, 105, 106.
agency generally in British India, 91.
comparison of English law as to, 96.
present English law as to, 103.
chartered Institute of, in the United Kingdom, 104.
comparison and English regulations concerning patent agents, 96-104.
English Chartered Institue of patent agents, 104.
English Register of Patent Agents, 102, 104.
Indian Law as to, 105.
legal position in India as to Patent Agents, 105.
no register of Patent Agents in India, 105.
PATENTEE,
qualifications of the patentee, 47, 347.
PATENT OFFICE,
creation of, in British India, 64.
inspection centres, 68.
inspection of publications at, 67.
journals, 66.
publications issued by and kept at, 65, 70.
purchase of publications, 69.
specifications open to public inspection, 67.
PERIOD OF PATENT, see Term of Patent.
PLAINT,
contents of, etc., in infringement suit: see under Pleadings.
PLEADINGS,
2. The Plaint in an infringement suit, 646, 709.
contents of, 646, 709.
particulars of breaches, 710.
practice in India as to particulars of breaches, 710.
whether plaintiff may give evidence outside particulars of breaches, 646, 712.
2. The Written Statement in an infringement suit, 646, 729.
contents of, 646, 732.
counter-claim for revocation in, as to, 647, 733.
defences in, 732.
particulars of objections, 647, 733.
time for filing, 646, 730.
written statement by Plaintiff in reply, 647, 735.
PRELIMINARY POINT,
trial of preliminary point first, 648, 767.
PREROGATIVE WRITS: see under High Prerogative Writs.
PRIOR GRANT, see "Freedom from Prior Grant."
PRIOR USER, 75.
by sale, 185.
by sale of product of a process, as to, 187.
145
1154 THE LAW OF PATENTS IN lNt>lA
PRIOR USER — Contd.
by the inventor, 191.
degree of publicity, 177, 179.
in public, 183.
private user by the inventor, 190 ( see also under “User.”)
secret or experimental user, 189.
whether any bar apart from want of novelty, 181.
PLAN,
mere plan not patentable, 123.
PLANTS,
as to the patentability of horticultural processes, 141.
PREROGATIVE, ROYAL,
unfitness for exercise of, 121.
PRINCIPLE,
mere principle not patentable, 123.
but mode of executing may be patentable, 127.
PROCEDURE IN OPPOSITION PROCEEDINGS, 427.
agency, 429.
fee prescribed, 427.
full statement, 428.
hearing date, 430.
notice of opposition, form of, 427.
oral evidence, 430.
rejoinder, 430.
reply, 429.
signing, verification, agency, 428, 429.
subpoenas for attendance of witnesses, 431.
PROCESS,
bio-chemical, 141.
PROPORTIONS,
taking out particular proportions, 153.
PUBLICATION,
as to documents at the Patent Office, 207.
whether public knowledge, 209.
British and American Specifications, 211.
confidential communications, 205.
degree of publicity, 199.
documentary, 195.
nature and degree of, 198.
oral, 204.
presumption of, 203.
proof of, 203.
through the Patent Office, 205.
what degree of publication will amount to want of novelty, 196.
PUBLIC KNOWLEDGE,
difference between, and common knowledge, 173.
INDEX
1135
RECIPROCAL ARRANGEMENTS,
between British India and Indian States, 356.
between British India and United Kingdom, 352.
between British India and foreign States: —
no international arrangements under the Indian Act for reciprocity
between India and foreign States, 364.
RECONNAISSANCE,
patentee must take precautions to keep informed of infringements, 639.
RENEWAL FEES,
comparison with scale in the United Kingdom, 43.
consequence of non-payment, 24, 32, 46.
extension for time for payment, 46.
how paid, 47.
method of payment, 46.
policy as to renewal fees in India, 40, 44, 45.
profit to Indian revenues, 45.
scale of, 41.
RECTIFICATION OF THE REGISTER, 494.
appeal from order of Controller, 495.
powers of the Controller, 79.
REFERENCE, ORDER FOR, INFRINGEMENT SUIT TO ASCERTAIN
DAMAGES OR PROFITS, 649, 779.
form of order, 649, 779.
inspection, 649, 779.
stay, where defendant appeals, 649, 780.
REFERENCES IN SPECIFICATION TO OTHER PATENTS,
distinct form of references, 379-383.
insertion of, by amendment called for by Patent Office, 377.
practice in India as to specific references, 395.
principles regarding the insertion of, 389.
REGISTER, RECTIFICATION OF, 494, 495.
REQUISITES FOR A VALID AND GOOD PATENT,
See under “Subject matter".
See under “Inventive Step".
See under “Illegality".
See under “Immorality".
See under “Unfitness for Exercise of Prerogative".
See under “Novelty".
See under “Freedom from Prior Grant".
See under “Utility".
See under “Sufficiency".
See under “True and First Inventor".
See under “Absence of Fraud".
under “Obligations not to Abuse Mqnopqly".
1156
THE LA# OF PATENTS IN INDIA
RESTORATION OF A PATENT, 529.
appeal from Controller’s decision, 534.
application to the Controller, 530.
construction and effect of Section 16(5), 531.
grounds for restoration, 530, 531.
practice under the Indian Act and Rules, 534.
powers of the Controller, 74.
“unavoidable”, 533.
this ground peculiar to the Indian Act, 534.
undue delay may be a bar, 531.
unintentional or unavoidable non-payment of fees, 530, 531.
“unintentional”, 531.
REVOCATION PROCEEDINGS (Chapter XI),
1. Generally : —
belated oppositions, no — in India, 435.
various proceedings possible, 435.
2. Petition to the High Court for revocation under Section 26, 436.
appeal from the decision of the High Court, 455.
construction of section 26(2) (b), 449.
counter claim for revocation, no --open to Defendant in infringement suit,
grounds for revocation, 451.
meaning of “any person alleging”, 449.
unfounded allegation not sufficient, 449.
procedure on the application to the A. G. for the fiat, 441.
( See also under “Fiat of the A. G., etc.)
procedure on petition to High Court for revocation under Section 26, 452.
• the Petition, 452.
security for costs, 452.
service of notice of the Petition, 453.
right to begin, 453.
reliefs obtainable on the Petition, 453.
status wheji the authority of the A. G. has been obtained, 437.
origin and object of the fiat of the A. G., 437-440.
status under sub-section (i), 449.
status under sub-section (ii), 450.
status under sub-section (iii), 450.
who may apply, 436.
3. Petition to H . E. the Governor General under Sections 22 and 23 , 455.
appeal, no appeal lies from an order under Section 22 or Section 23, 470.
criticism of the section: observations of Parker, J., 463.
failure on one application no bar to another, 465.
procedure, 457.
onus of proof, 459.
how far applicant may rely on discovery in order to establish his
grounds, 458.
protection of patentees, 463.
costs, 468.
who may apply, 456.
yrtien revocation will be ordered, 40*
INDEX - 11 *
1137 .
RIGHT TO BEGIN,
the right to begin and right to reply in an infringement suit, 648, 771.
ROYAL PREROGATIVE, 335.
( see also under “Patent’*.)
“mere motion”, 15.
SCHEME,
mere scheme not patentable, 123.
SCIENTIFIC WITNESSES,
application in infringement suit for limiting numbers of, 647, 753
“SCINTILLA OF INVENTION”, 144.
SEARCH BY PATENT OFFICE,
amendment called for by Controller, 377.
benefit to applicant of a thorough search by Patent Office, 374.
construction of Section 5, 370.
distinct forms of references, 379-383.
insertion of references, 377.
nature of objections which may be raised, 373, 376.
objections under Section 5, 370.
objections apart from Section 5, 372.
objection on ground of frivolity, 376.
want of utility, 377.
applicant not true and first inventor, 377.
fraud, 377.
practice in India as to specific references, 395.
time for raising objections by the Patent Office, 397, 398.
principles regarding the insertion of references, 389.
right to appeal, 398.
SECRECY,
not practicable protection for an invention, 45, 49.
SERVICE OF WRIT OF SUMMONS IN THE SUIT, 646, 706-707.
SETTLEMENT,
disposal of suit in event of settlement, 648, 765.
SIMILARITY, DEGREE OF, NECESSARY TO CONSTITUTE INFRINGE-
MENT,
degree of requisite to constitute infringement, 614.
doctrine of equivalents, 611.
if the essence of the invention is copied, this is infringement, 609.
imitation seldom completely identical, 608.
improvement by Defendant may be immaterial, 609.
pith and marrow, 609.
question of — a question of fact, 607.
when invention concerns a product, 610.
when invention is for new means only, 610.
When invention is for a combination, 612,
USB * THE LAW r OF PATENTS IN INDIA
SPECIAL LIST,
dismissal of suit for want of prosecution, 647, 764.
rule 36 of Calcutta High G&urt held not ultra vires , 764.
right of Plaintiff to file fresh suit, 648, 765.
SPECIFICATION, CONSTRUCTION OF,
as to “benevolent construction", 615.
everything not claimed disclaimed, 622.
in certain circumstances claims construed as including matter essentially
involved though not specifically described, 626.
specificatioif. construed as a whole, 620.
specification construed as understood by the addressee, 619.
when claim is for a combination, 627.
SPECIFICATIONS,
open to public inspection, 67.
STAR CHAMBER, COURT OF, 633.
STATUTE OF MONOPOLIES, 13-16.
( see also under “Patent".)
STAY OF EXECUTION,
application for — in infringement suit, 649, 787.
STAY OF THE SUIT,
alternative order for adjournment, 761.
application in infringement suit, for, 647, 760.
as to appeal from order allowing or refusing stay, 761.
SUBJECT MATTER (see also Manner of Manufacture, Inventive Step),
connection between subject matter and novelty, 161.
illustrative cases, 122.
in sense now used, 112-115.
in wide sense previously used, 111.
illegality, li9^161.
immorality, 119, 162.
inventive step, 117, 144.
inventive step in combination patents, 155.
inventive step in chemical patents, 156.
inventive step in selective patents, 151.
inventive step in taking out particular proportions, 153.
inventive step requisite for a derivative patent, 151.
long-felt want, 149.
manner of new manufacture, 115.
manner of manufacture, see also Manner of Manufacture.
solution of a problem, 146.
other elements of subject matter, 117.
scintilla of invention, 117, 144.
tests of subject matter, 121.
unfitness for exercise of Crown’s prerogative, 121, 162, 163.
whether a question of law or fact, 167 *
INbEX
1159
SUB-LICENCE, see under Licence.
SUFFICIENCY IN THE SPECIFICATION ^Chapter VII), 226.
history of previous requirements, 227.
how far a question of fact, 245.
in three different spheres: —
ambit to be sufficiently described, 230, 231.
nature of invention to be sufficiently described, directions, 230, 240.
best means known to applicant to be sufficiently described, 230, 244.
origin of the requirement, 226.
originally full descriptions in the specification objected to, 228, 229.
stages at which objection may be raised, 246.
before acceptance, 246.
in opposition proceedings, 246.
on petition for revocation, 247.
in suit for infringement, 248.
(see further under “Sufficiency in description of ambit, ambiguity"; also
under “Sufficiency of directions”; also under “Sufficiency in description
of best method”.)
SUFFICIENCY IN DESCRIPTION OF AMBIT, AMBIGUITY, 231.
as to distinguishing new from old, 232, 235,
ambit may appear from claiming clauses, 238.
degree of particularity required, 236.
drawings, effect of, 239.
importance, 232.
where invention claimed is for a combination, 239.
SUFFICIENCY OF DIRECTIONS, 240.
construction of the specification, 240.
degree of skill to be imputed to addressee, 241.
trial and error, 243.
SUFFICIENCY IN DESCRIPTION OF BEST METHOD, 244.
SURRENDER OF A PATENT,
powers of the Controller, 77.
surrender under Section 24, 472.
SYSTEM,
mere system not patentable, 123.
SYSTEM OF ADMINISTRATION OF PATENT LAW,
creation of the Indian Patent Office, 64.
generally, (Chapter V), 64.
the Indian Patent Office, 64, 83.
TERM OF PATENT, 21, 23, 24, 31, 36.
curtailment of term, 24, 32, 46.
extension of term, 33.
TERRITORY,
territory over which patent is effective, 33.
ilfc * THE LAW OF PATENTS IN iNblA
THREATS, SUIT FOR,
certificate for validity questioned, as to, 828.
construction of Section 36 6f the Indian Act of 1911, 812.
costs, 827.
damages, 826.
“district Court” includes a High Court having original jurisdiction, 814.
existing Patent postulated, 819.
falsity of the statement, 819.
grounds for success in suit for threats, 814.
immunity under the proviso:—
due diligence, 822.
“commenced and prosecuted”, 823.
nature of infringement suit required, 823.
lack of diligence in commencing suit for infringement, 821.
jurisdiction of District Courts, 814.
present English Law, 810.
present Indian Law, 811.
previous English Law, 806.
previous Indian Law, 810.
, procedure in suit for threats: —
who may sue, 825.
who may be sued, 824.
interlocutory injunction, 825.
plaint, 825.
particulars, 826.
reliefs obtainable in suit for threats, 826.
reliefs: injunction, damages, and costs, 814.
the tribunal, 814.
what are threats: in what form they may be made, 815.
to whom addressed, 815.
who threatened, 816.
what threatened, 816.
TRUE AND FIRST. INVENTOR,
application by true and first inventor himself, 335.
definition, 252.
where more than one person has collaborated in the work of invention,
253.
who entitled to describe himself as true and first inventor, 335.
form of application, 335.
master and servant, 254.
meaning limited to invention in British India, 251.
meaning limited to invention disclosed, 251.
meaning of “true and first inventor”, 249, 250.
nature and origin of the requirement, 248.
stages at which objection may be raised, 257.
whether a question of law or fact, 256.
UNDEFENDED LIST,
application in infringement suit for the suit to be placed on the undefended
list, 647, 762.
INDEX
1161
UNFITNESS FOR EXERCISE OF PREROGATIVE, 121.
USER,
accidental, 190.
experimental, 189.
secret, 189.
secret — for unreasonable profit, 193.
unconscious, 190.
(see also under “Prior User”).
UTILITY, 220.
a question of fact, 222.
connection between utility and sufficiency, 223.
distinction for Patents and Designs, 222.
meaning formerly not prejudicial to the public, 220.
meaning, in modern sense, 221.
slight amount, sufficient, 221.
stages at which objection for want of utility may be raised, 223.
tests of, 222.
WANT OF PROSECUTION,
dismissal of suit for—, see under Special List.
WRIT OF CERTIORARI,
Calcutta High Court, origin of powers of, to issue, 794.
circumstances in which — may be issued, 798.
absence of other adequate remedy, 802.
on a judicial body, 798.
want of or excess of its jurisdiction, 801.
where the remedy will be effective, 802.
difference between — and Writ of Prohibition, 791.
discretion, as to, 803.
local extent of jurisdiction of a chartered High Court, as to, 797.
Madras High Court, origin of powers of, to issue a — , 796.
nature of the writ, 791.
nature of the jurisdiction to issue a -, 790.
powers of certain Courts in British India to issue, 793, 796.
wide exercise of the jurisdiction, 791.
will lie in a proper case against the Controller of Patents, 804.
WRIT OF MANDAMUS,
codified in British India, 792.
none in British India apart from Section 45 of the Specific Relief Act, 792.
will lie in a proper case against the Controller of Patents, 804.
WRIT OF PROHIBITION,
Calcutta High Court, origin of powers of, to issue a, 794.
circumstances in which — may be issued, 798.
absence of other adequate remedy, 802.
on a judicial body, 798.
want of or excess of its jurisdiction, 801.
146
1162 THE LAW OP PATENTS IN INDIA
WRIT OF PROHIBITION—
where the remedy will be effective, 802.
difference between — and Writ of Certiorari, 791.
discretion, as to> 803.
local extent of jurisdiction of a chartered High Court, as to, 797.
Madras High Court, origin of powers of, to issue a — , 796.
nature of jurisdiction to issue — , 790.
nature of the writ, 791.
power of certain Courts in British India to issue, 793, 796.
wide exercise of the jurisdiction, 791.
will lie in a proper case against the Controller of Patents, 804.
WRITTEN STATEMENT,
contents of, etc., in infringement suit: see under Pleadings.
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